Examination Procedure and Examination Report-
After an application is filed the same is then examined by the Registrar in accordance to the provisions of Trade Marks Act. If an objection to registration of the mark is raised, an official examination report will be issued by the Registrar within 3 months of filing depending on the backlog of Registry.
The Registrar may accept or refuse the application subject to the provisions of the Act. An application can be refused / objected by the Registrar on relative or absolute grounds:
Section 9 of the Trade mark Act, 1999 provides for the absolute grounds for refusal of a Trade mark. The absolute grounds of refusal are:
(i) If the Trade mark is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of others;
(ii) If the Trade mark consists exclusively of the marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origins or the time of productions of the goods or rendering of the service or other characteristics of the goods or services;
(iii) If the Trade mark consist exclusively of marks or indications which have become customary in current language or in the bona fide and established practices of the trade.
(iv) The Trade mark is of such nature so as to deceive the public or cause confusion;
(v) The mark comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
(vi) The mark comprises or contains scandalous or obscene matter;
(vii) Use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950;
(viii) If the mark consists exclusively of:
- The shape of goods which results from the nature of the goods themselves; or
- The shape of goods which is necessary to obtain a technical result; or
- The shape which gives substantial value to the goods.
Exception to Section 9
However, a Trade mark which may be initially refused on absolute grounds can be registered if it acquires a distinctive character/ secondary significance as a result of extensive and continuous use
The relative grounds for refusal of a Trade mark are provided under Section 11 of the Trade mark Act, 1999 provides that:
• That a Trade mark cannot be registered if because of:
(i) Its identity with an earlier Trade mark and similarity of goods or services;
(ii) Its similarity to an earlier Trade mark and the identity or similarity of the goods and services, there is likelihood of confusion.
• That a Trade mark cannot be registered which is identical with or similar to an earlier Trade mark and which is to be registered for goods and services which are not similar to those for which earlier Trade mark is registered in the name of a different proprietor if, or to the extent, the earlier Trade mark is a well- known Trade mark in India.
• That a Trade mark cannot be registered if or to the extent that, its use in India is liable to be prevented by virtue of any law.
Reply to office Action
Pursuant to the issuance of Examination Report/ office action, the applicant has to file an appropriate reply along with the required documents (if any) for overcoming the objections raised by the Registry against the Trade mark.
The Trade Marks Rules, 2002 provide for a period of 30 days from the date of receipt of the examination report for filing reply to the office action, or to request a hearing. In the absence of such response, the application shall be deemed to have been abandoned on the grounds of non-prosecution.
If the Examiner after scrutinizing the reply to office action finds it appropriate then the Trade mark will be advertised in the Trade mark Journal. If the Examiner is not satisfied with the reply or the objections are not met then he may list the application for hearing on a stipulated date and time.
Publication in the Trade marks Journal
After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trade marks Journal. An application is advertised in the Trade Marks Journal so as to invite the public for filing opposition against the registration of a mark. Thus, once a mark is accepted, the Registrar advertises the mark in the official Trade marks Journal, which is published and is available on the Registry’s website every Monday.