INTRODUCTION TO THE TOPIC
In India trademarks law is governed by Trade Mark Act, 1999. The Act provides for registration of any mark or Logo which is capable of being represented graphically as a word, device, label, numerals, or combination of Colors and capable of distinguishing the goods or services of one person from another.
After filing application for registration of trademark, it is sent for examination by the examiner of trademark. On the basis of his examination if he finds any grounds he may raise TM objections in the examination report, to which reply is to be filed within prescribed period of 30 days.
In this write up we will study in detail about the examination report, reasons for objections in examination report and timeline within which reply is to be filed to examiner of trademark. So, let’s get started.
EXAMINATION OF TRADEMARK APPLICATION:
- After submitting the application to TM Department, the Registrar of Trademarks examine the application and make an Examination Report.
- Where the application is accepted by the TM department, it is sent for Publication in TM Journal and status changes from Accepted to Accepted & Advertised.
- If the Examination Report contains objections under Section 9 or/and 11, a Reply to Examination Report is to be submitted within 30 days from the date of receipt of this Examination Report, to satisfy the Registrar as to why the Applications should be marked as Accepted. The applicant instead of filing the Reply to Examination Report may also request directly Hearing skipping the Reply route.
- If the Examiner is not satisfied with the reply filed by the applicant, a show cause hearing can be requested. On the other hand, if the Examiner is satisfied and believes that the trademark should be registered, he will publish it in Trademark Journal.
REASONS FOR TRADEMARK OBJECTIONS IN THE EXAMINATION REPORT:
- To rectify the clerical error in TM application: Where the TM Department finds any information is incorrect, incomplete or for any reason the application is required to be modified, he may object in Examination Report. The reply for this objection is filed in Form TM-M within one month from the date of receipt of this Examination Report.
- Objection under Section 9: Where the Examiner finds that the TM application is violating any clause of Section 9, the Examination Report is marked as objected under Section 9. The reply to this objection shall be filed in Form MIS-R within 30 days from the date of receipt of this Examination Report.
- Objection under Section 11: Where the Examiner finds that the TM application is violating any clause of Section 11, the Examination Report is marked as objected under Section 11. The reply to this objection shall be filed in Form MIS-R within 30 days from the date of receipt of this Examination Report.
ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION:
As per Section 9 those trademarks shall not be registered:
- Which are devoid of any distinctive character,
- Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or
- Which consist exclusively of marks or indications which have become customary in the current language
- It is of such nature as to deceive the public or cause confusion.
- It contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
- It comprises or contains scandalous or obscene matter;
- Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
- A mark shall not be registered as a trademark if it consists exclusively of—
a. The shape of goods which results from the nature of the goods themselves.
b. The shape of goods which is necessary to obtain a technical result; or
c. The shape which gives substantial value to the goods
SECTION 11 OF TRADEMARK REGISTRATION ACT, 1999
Relative grounds of refusal
Section 11 of the Act stipulates that where there exists a likelihood of confusion on the part of the public because of the identity with an earlier trademark or similarity of goods or services, the trademark shall not be registered.
In other words, where there is similar trademark exist in the Trademark register the trademark shall not be registered.
The term “earlier trademark” means a registered trademark or an application which has a date of application earlier than the trademark in question.
TIMELINE FOR FILING REPLY TO TRADEMARK OBJECTION
Reply for Trademark Objection is to be filed within 30 days from the date of receipt of examination report. However, extension may be granted by the registrar on submission of application for extension of timeline by filing form TM-M electronically with a valid reason for not filing reply on time.
Thank you for giving your valuable time for reading this write up, If you still have any queries regarding Filing Objection reply to trademark examination report or registration of Trademark in India, then you can connect to our team at [email protected] or call us at 9988424211.