Once the data entry of an application for registration of a trademark is made and digitization of the trademark application & other connected documents, if any, is complete, the application is allotted to an examiner for examination of application under the provisions of the Trademarks Act & Rules.
The Examiner looks at the application detail and the original application and scrutinizes the application as to-
- whether the application has been filed in the manner as prescribed in the Trademarks Rules 2017.
- whether the trademark applied for registration can be refused registration(- on relative grounds and/or absolute grounds) under the Trademarks Act 1999, if yes, the reasons; and
- whether any restriction, condition or limitation is required to be imposed, in case the application is accepted for registration
The Examiner shall thoroughly examine the application as above and make a search of earlier trademarks which are identical with or similar to the mark being examined and shall prepare his consolidated examination report through the system containing therein, as for as applicable,-
- all the objections relating to formality requirements as to filing of application,
- objections to acceptance of the application for registration of the trademark under Section 9, 11 and other Sections of the Trademarks Act 1999, and
- proposals for conditions of acceptance or limitation to use of the mark, in case the application is accepted for registration.
Ground of Objection
During the examination of the trademark application, objections are raised mainly on following points:
- Identification of Nature of Application
- Ensuring the appropriate name of the Applicant
- Ensuring the submission of the TM-48 / Power of Attorney
- Ensuring about the applicant’s principal place of business
- Ensuring transliteration and translation of trademark in non-English or non-Hindi characters
- Ensuring the consent of a person or his legal representative, if the trademark contains a name or representation of that person
- Ensuring submission of draft regulations in case of an application for registration of a collective/certification mark
- Ensuring submission of adequate priority documents, in case of applications with priority claims
- Examination of application as to classification of goods and services
- Examination of application as to absolute and relative grounds for refusal of registration
- Examination of series marks
Communication of Objection or Examination report
Once the application made for registration of trademark is examined and any objection to acceptance of the application for registration is found, the examination report with objection(s) is sent to the applicant/applicant’s authorised agent. The examination report is also put up on the office website along with application details of the relevant application.
Reply to Examination Report
The response to office objections mentioned in the examination report, should be submitted by the applicant or applicant’s authorised agent concerned, as the Reply to Examination Report.
The response to office objections can be submitted by sending the scanned copy (in colour pdf file format) of the Reply to Examination Report, at email@example.com.
In case the applicant/applicant’s authorised agent has a level III (now class II also allowed) digital signature he may send the Reply to Examination Report online through the gateway provided at the home page of the office website www.ipindia.nic.in
The Reply to Examination Report may also be submitted at the Head Office/appropriate office of the Trade Marks Registry, personally or by post. Any affidavit and supporting documents may also be submitted along with the Reply to Examination Report
In case of objection to the effect that goods or services mentioned in the application do not fall in the class mentioned in the application, the applicant may file a request for amendment of the application by correcting the class; the applicant may however submit that as per classification of goods or services published by the Registrar, goods or services have been rightly classified. In case of objection to the effect that some goods or services mentioned in the application do not fall in the class, the applicant may file a request for amendment of the application by deleting items that do not fall in the relevant class. the applicant may however submit that as per classification of goods or services published by the Registrar, all items fall in the class mentioned in the application.
In case of objections as to non distinctiveness of the trademark, the applicant’s may submit response to establish that the trademark applied for registration is capable of distinguishing applicant’s goods or services; or the trademark has acquired a distinctive character in view of its extensive use in relation to relevant goods or services, before the date of application. If the applicant claims that the trademark has acquired distinctiveness by virtue of its extensive use, the applicant should file an affidavit as evidence of use of the trademark along with supporting documents.
In case of objections on relative grounds of refusal because of identical or similar trademarks in respect of similar goods or services, existing on records, the applicant may submit to the effect that trademarks cited as conflicting marks in the examination report are different than the applicant’s trademark; or goods or services mentioned in the application are different than those covered in marks cited as conflicting in the examination report. The applicant may also produce consent/No objection from the proprietor of marks cited as conflicting in the examination report
If after considering the Reply to Examination Report and other documents attached therewith in view of the provisions of the Trade Marks Act 1999 and Trade Marks Rules 2002 the designated officer thinks that office objections can be waived, he/she shall accept the application or publish the same in the trademark journal.
In case an application for amendment/correction of the application on form TM-M is filed by the applicant, the designated officer shall at first dispose of the TM-M and take appropriate action through the system and then take appropriate decision about the acceptability of the trademark for registration. In case the TM-M is allowed, amendment in the details of the application shall be incorporated accordingly by the Officer concerned and the case is considered taking into account the amendment.
If the designated officer considers that even after applicant’s response the office objections cannot be waived, he shall move the case for hearing through the system.
Treating the application as abandoned
If, within one month from the date of receipt of the examination report, the applicant fails to respond to the communication, the Registrar may treat the application as abandoned.
In case the response to the examination report is received within the aforesaid time, the same shall be duly considered and if the Registrar accepts the application for registration, he shall communicate such acceptance to the applicant and cause the application to be advertised as accepted under sub-section (1) of section 20.
If the response to the examination report is not satisfactory or where the applicant has requested for hearing, the registrar shall provide an opportunity of hearing to the applicant and the same shall be conducted as per rule.
In case the applicant fails to appear at the scheduled date of hearing and no reply to the office objection has been submitted by the applicant, the Registrar may treat the application as abandoned.
Where the applicant has submitted his reply to the examination report within the aforesaid period or has appeared in the hearing and made his submissions, the Registrar shall pass an appropriate order.