The advent of online trademark registration in India has improved the efficiency and transparency of trademark filing. An application for registration of a trademark goes through various stages of scrutiny before it gets registered. These stages or status are briefly explained below.
In this article, we decipher the meaning of the trademark status and the action that must be taken by the Entrepreneur to ensure smooth trademark registration.
Status: New Application
The trademark application has been entered into the trademark application database.
Status: Send to Vienna codification
This step is applicable for non-text trademark application that contain logo or artwork The moment a trademark application is filed, a Vienna Code is assigned to it if the trademark encompasses logo /figurative elements. This is done based on the kind of the figurative element/logo. The Vienna codification is done by the Registry, enabling trademark searches to be conducted for logos/ artworks. Once it is done, there still is a long way in the registration process such as examination, formalities check, public cation and finally the registration.
Status: Formalities Chk Pass
When all the basic filing requirements for trademark registration are passed, then the status in the Indian Trade Mark Registry website shows as “Formalities Chk Pass” The Trade Mark Registry checks the basic requirements such as: whether appropriate translation/transliteration (in case applicable) has been filed. Whether the POA has been uploaded (if filed through an agent). In case these basic requirements are not fulfilled, the status could be reflected as “Formalities Chk Fail”. After the completion of this process, the trademark application goes through a substantive examination, during this phase objections could be raised under the Trade Marks Act, 1999, Sections 9 and 11
Status: Marked for Exam
When the trademark application is assigned to an Examiner for issuance of examination report, the Indian Trade Mark Registry website shows as “Marked for Exam”.
The trademark application is scrutinised by the examiner to check whether the trademark can be accepted to be published in the Trade Marks Journal, preceding the registration. The following checks are done:
1. Whether the prescribed manner has been adhered to while filling the application.
2. Whether any similar/same/trademark in respect of similar/same service/goods is there on record.
3. Whether the trademark that has been applied for can be accepted for registration under the Trade Marks Act 1999.
4. Whether any, condition, limitation or restriction is required to be imposed.
The Examiner will then issue a consolidated ‘Examination Report’ which mentions the objections, if any; or accepts the application. After this procedure, it takes around 12 to 18 months for the examination report to be issued.
If the Examiner /Registrar raises objections in the Examination Report, the status of your trademark application will show as “Objected”. After the application is scrutinized, objections may be raised by the Examiner/Registrar under the Trade Marks Act Sections 9 and 11.
For Example, Objections are likely to be made under Section 9, when the Examiner/ Registrar considers the trade mark to be descriptive of generics/laudatory/goods indicating nature or quality of the goods.
To overcome this objection, it is essential to show that the trade mark is characteristically distinctive. This objection can also be avoided if the trade mark has developed a unique character because of extensive use. For this purpose, it is required to submit a user affidavit with cogent evidences which shows that the trade mark has acquired uniqueness.
Section 11 objections are made by the examiner/ Registrar when there is a similar/ identical trademark in respect of similar/identical services/goods already on record in the Trade Mark Registry. In such a case, the Examiner/ Registrar issues a computer generated Search Report which comprises the list of conflicting marks.
Status: Exam Report Issued
The trademark status will shows as “Exam Report Issued” if the trademark application is accepted for publication and is due for publication in the Trade Marks Journal. This status is used to indicate that the trade mark has been accepted in the initial examination report, or after the objections have been overcome by the applicant by way of a written submission or a hearing.
If the Examiner/Registrar refuses a trademark application after hearing or considering the applicant’s response to an examination report, then the trade mark status in the Indian Trade Mark Registry website shows as “Refused”.
The trademark status could also show as “Refused” in case a third is successful in opposing against the registration of the trade mark. If the trademark application shows as “Refused”, then an appeal can be filed under Section 91 of the Trade Marks Act with the Intellectual Property Appellate Board (IPAB) within 3 months.
Status: Adv Before Accepted
If the trademark application has been advertised before the acceptance in the Trade Mark Journal by the Registrar, then the trademark status in the Indian Trade Mark Registry website will show as “Adv before accepted”.
This status allows any third party to oppose the trade mark application within 4 months from the date of the advertisement in the journal.
In scenario where an application is advertised before Acceptance and the opposition lodged during the opposition period is nil, there is a requirement for the application to be accepted by an Accepting Officer just before the registration certificate is issued. Once this is done, the trademark status then changes to “Advertised and Accepted” and then “Registered”. The registration certificate is generally issued in around 3 months upon expiry of opposition period.
In case after the advertisement of the trade mark, a third party files an opposition to the registration of the trade mark within the 4 months from the date of advertisement then the trade mark status in the Indian Trade Mark Registry website will show as “Opposed”.
A third party usually files an opposition when there is a similar trademark published in the Journal or if the trade mark is alleged to be non-distinctive.
The trademark status changes from “Advertised” to “Opposed” after a notice of opposition is filed by a third party. This notice is served on the applicant which states the grounds on which the opposition is based. It is necessary to file a counter statement by the applicant within 2 months from the date of receipt of the notice of opposition. The trademark application is “Abandoned” if no counter statement is received by the Registry within the given period.
The trademark status will show as “Withdrawn” if the applicant files a request to withdraw the application voluntarily. In a few cases, the applicant may withdraw the application when the Hearing Officer fails to accept the trademark.
The trademark has been removed from the trademark registry. The mark is no longer trademarked.
When the trade mark status shows as “Registered” it means the trade mark registration certificate has been issued by the Registrar. After this the applicant becomes the registered owner and is then entitled to use the ® symbol next to its trademark. Under the present Act, a registration is valid for 10 years from the date of application and should be renewed every 10 years before its expiry.