Trademark registration is a long-drawn process that requires constant monitoring. Keeping abreast of a trademark’s application status can help identify and remedy those factors that are blocking its approval.
The advent of online trademark registration in India has improved the efficiency and transparency of trademark filing. A trademark may be declared incontestable after 5 years of consecutive use from the date of federal registration. An application for registration of a trademark goes through various stages of scrutiny before it gets registered. These stages or statuses are briefly explained below.
In this article, we will also decipher the implications of the different trademark statuses and the corresponding action they require for smooth trademarking.
Status: New Application
The trademark application has been newly entered into the trademark application database.
Status: Send to Vienna Codification
This step is applicable for a non-text trademark application that contains a logo or artwork The moment a trademark application is filed, a Vienna code is assigned to it if the trademark encompasses logo/figurative elements. The Vienna codification process is done by the registry, enabling trademark searches to be conducted for logos/artwork. Once this process is completed, there is still a long way to go in the registration process followed by an examination, formalities check, public caution, 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 trademark registry website shows as ‘Formalities chk pass’. The trademark registry in this step checks the basic formality requirements such as:
- Whether appropriate translation/transliteration (if 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 information is reflected as ‘Formalities chk fail’. After the completion of this process, the trademark application goes through a substantive examination. During this phase, objections can be raised under Sections 9 and 11 of the Trademarks Act of 1999.
Status: Marked for Exam
When a trademark application is assigned to an examiner for issuance of the examination report, the Indian trademark registry website shows the status ‘Marked for exam’.
The trademark application is scrutinized by the examiner to check whether the trademark can be published in the trademarks journal, preceding the registration. The following checks are done to see:
- Whether the prescribed manner has been adhered to while filling the application
- Whether any similar trademark in respect of similar/same service/goods is there on record
- If the trademark that has been applied for can be accepted for registration under the Trademarks Act of 1999
- Whether any condition, limitation or restriction is required to be imposed.
The examiner will then issue a consolidated ‘Examination report’, which either mentions objections against the application, 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 read as ‘Objected’. After the application is scrutinized, objections may be raised by the examiner/registrar under Sections 9 and 11 of the Trademarks Act.
For example, objections are likely to be made under Section 9, when the examiner/registrar considers the trademark to be descriptive of generics, laudatory, or indicating the nature or quality of the goods/services.
To overcome this objection, it is essential to show that the trademark is characteristically distinctive and does not fall under any of the above-mentioned categories. This objection can also be avoided if the trademark has developed a unique character because of its extensive use. For this purpose, it is required to submit a user affidavit with cogent pieces of evidence that show that the trademark has acquired uniqueness over continued usage.
Section 11 objections can be made by the examiner/registrar when there is a similar/identical trademark in similar/identical classes of services/goods already on record in the trademark 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 show as ‘Exam report issued’ when the trademark application is approved for publication and when it is due for publication in the trademarks journal. This status information is used to indicate that the trademark 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 trademark status in the Indian trademark registry website shows as ‘Refused’.
The trademark status can also be read as ‘Refused’ in those cases where a third party is successful in opposing the registration of the trademark. This status can be appealed by filing a petition under Section 91 of the Trademarks Act with the intellectual property appellate board (IPAB) within 3 months.
Status: Adv Before Accepted
If a trademark application is being advertised before its acceptance in the trademark journal by the registrar, then the trademark status in the Indian trademark registry website will show as ‘Adv before accepted’.
This status allows any third party to oppose the trademark application within 4 months from the date of the advertisement in the journal.
In a scenario where an application is advertised before acceptance and no opposition is lodged during the opposition period, the application has to be accepted by an Accepting Officer just before the registration certificate is issued. Once this is done, the trademark status changes to ‘Advertised and accepted’, and then subsequently to ‘Registered’. The registration certificate is generally issued within 3 months of expiry of the opposition period.
In case after the advertisement of the trademark, a third party files an opposition to the registration of the trademark within the 4 months from the date of advertisement then the trademark status in the Indian trademark 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 trademark 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 status is changed to ‘Abandoned’ if no counter statement is received by the registry within the given period.
The trademark in the Indian trademark registry website will show as ‘Withdrawn’ if the applicant files a request to withdraw the application voluntarily.
The trademark status in the Indian trademark registry website will show as ‘Removed’ if the trademark has been removed from the trademark registry. The mark is no longer trademarked in the eyes of law.
When the trademark status in the Indian trademark registry website shows as ‘Registered’ it means the trademark registration certificate has been issued by the Registrar. After this, the applicant becomes the registered owner of the trademark. The applicant is then entitled to use the ® symbol next to the trademark. Under the present Act, trademark registration is valid for 10 years from the date of application. Remember to renew it every 10 years before its expiry.
Trademark registration is a complicated and time-consuming process that requires extensive documentation and a truckload of expertise. This is why we recommend that you engage the services of trademark specialists such as Vakilsearch when you wish to register or renew a trademark. Don’t hesitate, get our team on the job today!
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