Trademarks play a crucial role in safeguarding a business's intellectual property. Throughout the year, numerous trademark applications are submitted before the Indian Trade Marks registry (Registry), however, not all of them receive approval for registration in a straightforward manner.
The process of trademark registration before the Registry involves several stages. At the initial stage, once an application for registration of the mark is filed before the Registry, an examination officer at the Registry (Examiner) examines the relevant application to make sure that the same fulfills the criteria and requirements for registration in accordance with the provisions of the Indian Trade Marks Act, 1999 (Trademarks Act). Upon ascertaining that the trademark application has no procedural deficiencies, as part of such examination, the Examiner conducts thorough database searches in the official trademarks register to identify whether there are any pre-existing trademarks that are identical to or confusingly similar to the mark for which an application has been filed.
After conducting the above-mentioned examination, an official examination report (Examination Report) is issued by the Registry. The Examination Report is uploaded on the official portal of the Registry and is also communicated to the applicant of the trademark application (Applicant) or the Applicant’s trademark authorized agent/attorney by way of an email. In general, the Registry takes around 2-4 months (from the date of filing) to examine a trademark application and issue an Examination Report.
Grounds of Trademark Objection in India
If a trademark application otherwise has no procedural deficiencies, an objection against the registration of a trademark application can inter alia be raised by an Examiner under the Trademarks Act on account of the following:
According to Section 9(1) of the Trademarks Act, a trademark cannot be registered if:
- The trademark is incapable of differentiating the applicant's products/services from those of others.
- A trademark identifies the kind, quality, place of origin, time of production, or qualities of goods or services,
According to Section 9(2) a mark is non-registrable if:
- A trademark gives rise to consumer confusion or deception.
- A mark includes elements or expressions that may cause offense to the religious sentiments of any segment or group of Indian citizens.
- A trademark incorporating or featuring scandalous or obscene content.
- Their use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Section 11 of the Trademark Act establishes grounds for rejecting the registration of a trademark on relative terms. This can occur if the trademark is identical and/or deceptively similar to a pre-existing trademark and involves identical or similar goods and services.
The primary objective of this provision is to safeguard rights of the owners of prior trademark applications/registrations. If an applied-for mark closely resembles or is identical to an existing mark in connection with identical/similar goods or services, this similarity may lead to confusion among consumers regarding the origin of the goods or services associated with the applied-for mark vis-à-vis the existing mark. Consequently, in such a case, the Examiner may object to the registration of the applied-for mark under Section 11 and cite the existing/earlier marks in its Examination Report.
How to Respond to Trademark Examination Report Issued by the Registry
If you have received an Examination Report against your application, it is recommended that you engage a competent trademark agent or attorney for taking the following steps:
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Review the Examination Report: Thoroughly review the examination report. Understand the objections raised in the report and prepare a strategy and the grounds to be taken while responding to the Examination Report.
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Gather Supporting Materials: Gather Supporting Materials: Compile all pertinent evidence, documents, and factual details required to be submitted (if applicable) in support of the objected trademark application. This may include evidence of prior usage or the distinctive nature of the applied-for mark, and any other relevant information.
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Draft a Written Reply: Draft a comprehensive written reply addressing each trademark objection contained in the Examination Report. The response to the Examination Report should clearly address all concern, such as by explaining how the objected trademark application aligns with legal requirements or does not infringe upon the rights of any existing or pending trademarks etc.
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Filing of the Response: A response to the Examination Report must be submitted to the Registry within the designated timeline under the Trademarks Act, as elaborated herein below.
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Monitor Progress: Once a response is filed with the Registry, one must stay vigilant for any further communications from the Registry and be ready to furnish additional information and/or documents (if required).
Timelines for Filing Reply to Examination Report
Once the Examination Report is served upon the Applicant, the Applicant is under a deadline of one (1) month to file its response with the Registry. It is to be noted that if the Applicant fails to file its response within such deadline, its trademark application may be deemed to have been abandoned. For reference, it is possible for an Applicant to seek an extension of the stipulated timeline of one (1) month (by one additional month at a time) by filing an appropriate request with the Registry, however, the said request is required to be filed within the one month from the date of receipt of the Examination Report.
Once a response to the Examination Report is filed with the Registry, the same will be considered by the Registry in due course, subsequent to which, the Registry will then either accept the trademark application (and publish the applied-for mark in the trademarks journal) or else list the matter for show cause hearing.
What are the Consequences of Non-filing of Reply to the Examination Report
The consequences of non-filing a reply to an examination report in India are as follows:
- The trademark application will be deemed to have been abandoned.
- The applied-for mark will not be registered and hence, no statutory rights will be granted over the said mark.
- Usage of the trademark as a registered mark will not be permitted.
- Prevention of others from using the trademark will be tiresome in the absence of any statutory rights.
If an Applicant fails to file a reply to an Examination Report within the statutory timeline, an Applicant is still entitled to file a fresh trademark application for the same mark before the Registry. However, please note that there are still chances of receiving an objection to the registration of the new trademark application. For this purpose, it is highly recommended that an Applicant consult and engage a competent trademark attorney or agent prior to filing a trademark application or response to Examination Report
How Seedling Associates can help you with drafting and filing of a response to the Trademark Objection
The team at Seedling Associates comprises of top-notch and expert trademark attorneys who excel in handling the entire trademark objection process seamlessly and speedily. Our in-house trademark specialists can proficiently handle all trademark registration formalities and ensure a hassle-free experience. Connect with us via our website to initiate and fast-track your trademark registration process.
