The trade mark status in the Indian Trade Mark Registry website shows as “Refused” when the Registrar/Examiner has refused a trade mark application after considering or hearing the applicant’s response to an examination report. The trade mark status could also show as “Refused” pursuant to a successful opposition by a third party against the registration of the trade mark. Effectively, the trade mark application is not in force.

Where a trade mark has been refused, Section 91 of the Trade Marks Act provides for an appeal to be filed with the Intellectual Property Appellate Board (IPAB) within 3 months.

The trade mark status in the Indian Trade Mark Registry website shows as “Abandoned” when the applicant failed to respond within the stipulated time period prescribed under the Act. Effectively, the trade mark application is not in force.

The trade mark application could be “Abandoned” due to lack of prosecution by the Applicant such as when:

1. No response has been filed to a deficiency letter within the stipulated period of one month from receipt of letter

2. No response has been filed to an examination report within the stipulated period of one month from receipt of examination report

3. Show-cause hearing has not been attended when the hearing was posted

4. Counter statement has not been filed with 2 months from receipt of notice of opposition

The trade mark status in the Indian Trade Mark Registry website shows as “Withdrawn” when the applicant has filed a request to withdraw the application voluntarily. In some cases, the applicant may have withdrawn the application when the Hearing Officer failed to accept the trademark. Effectively, the trade mark application is not in force.

The trade mark status in the Indian Trade Mark Registry website shows as “Registered” when the trade mark registration certificate has been issued by the Registrar. The applicant becomes the registered owner and is entitled to use the ® symbol next to its trade mark. The registered owner can take infringement action against the use of any deceptively similar trade marks. The online status in the Trade Mark Registry website sets out some important particulars such as the renewal due date.

It is to be noted that under the present Act, the registration is valid for 10 years from the date of application and should be renewed every 10 years before its expiry. The renewal application can be filed within 6 months before the expiry of trade mark. There is a grace period for a period of 6 months after expiry of trade mark during which the registration can be renewed by paying additional surcharge. If the trade mark registration is still not renewed during the 6 month grace period, the trade mark can be restored and renewed within 1 year after expiry by paying additional penalty.

If the 1 year grace period has also lapsed, then there is no possibility to restore or renew the trade mark under the Statute. Therefore, it is imperative that the renewal dates are properly docketed/diarized so that renewal fees can be filed at the appropriate time before expiry of trade mark.

In case the registration certificate is not available with the applicant, there is an option to apply for duplicate copy of registration certificate.

In case the trade mark registration is to be used for any legal proceedings, a certified copy should be obtained from the Trade Mark Registry.

After the advertisement of trade mark in the Trade Marks Journal, any third party may file an opposition to the registration of the trade mark within 4 months from the date of advertisement.

The trade mark status in the Indian Trade Mark Registry website shows as “Opposed” when such opposition has been filed by a third party (“opponent”). 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 trade mark status changes from “Advertised” to “Opposed” when a notice of opposition is filed by a third party. The notice of opposition is served on the applicant which sets out the grounds on which the opponent has based his opposition. It is imperative that a counter statement is filed by the applicant within 2 months from the date of receipt of notice of opposition, failing which it will be considered that the applicant is not interested in contesting  the opposition. Accordingly, the trademark application will be abandoned if no such counter statement is received by the Registry within the stipulated period. It is important to note that no extension of time is granted for filing the counter statement.

Once the counter statement is filed by the applicant and served, the opponent is required to file the evidence in support of opposition within 2 months from the date of receipt of counter statement. The applicant is then required to file the evidence in support of application within 2 months from the date of receipt of evidence in support of opposition. The opponent then has an opportunity to file an evidence in reply. This ends the documentation stage in the opposition proceedings, after which the Registrar hears arguments from both parties or its agents before disposing off the matter.

Trade mark opposition is a lengthy process and it usually takes years for the Registrar to pass orders on the opposition.

The trade mark status in the Indian Trade Mark Registry website shows as “Accepted & Advertised” when the trade mark application has been accepted and advertised in the Trade Mark Journal. This is one of the final stages in the trade mark registration process.

The statute allows for any third parties to oppose the trade mark application within 4 months from the date of advertisement in the Trade Marks Journal. If no oppositions are filed, then the registration certificate is usually issued in approximately 3 months upon expiry of opposition period.

The trade mark status in the Indian Trade Mark Registry website shows as “Advertised before acc” when the trade mark application has been advertised before acceptance in the Trade Mark Journal by the Registrar.(factors taken into consideration by the registrar for advertising the application in the trade mark journal) This is one of the final stages in the trade mark registration process.

The statute allows for any third parties to oppose the trade mark application within 4 months from the date of advertisement in the Trade Marks Journal. Where an application is Advertised before Acceptance and there is no opposition lodged during the opposition period, there is a procedural requirement for the application to be accepted by an Accepting Officer before the registration certificate is issued. Once accepted by the Accepting Officer, the trade mark status changes to “Accepted and Advertised” and then “Registered”. The registration certificate is usually issued in approximately 3 months upon expiry of opposition period.

The trade mark status in the Indian Trade Mark Registry website shows as “Accepted” when the trademark application has been accepted for publication and is due for publication in the Trade Marks Journal.

The above status could be pursuant to direct acceptance in the examination report, or could be pursuant to objections overcome by way of written submissions or hearing.

The next step would be the advertisement of trade mark in the Trade Marks Journal. The statute then allows for any third parties to oppose the trade mark application within 4 months from the date of advertisement in the Trade Marks Journal. If no oppositions are filed, then the registration certificate is usually issued in approximately 3 months upon expiry of opposition period.

The trade mark status in the Indian Trade Mark Registry website shows as “Exam Report Issued” when the trademark application has been accepted for publication and is due for publication in the Trade Marks Journal.

The Trade Mark Registry uses this status to indicate that the trade mark has been accepted in the examination report, or when the objections have been overcome by the applicant by way of written submissions or hearing. The trade mark statuses “Exam Report Issued” and “Accepted” are used interchangeably by the Trade Mark Registry.

The next step would be the advertisement of trade mark in the Trade Marks Journal. The statute then allows for any third parties to oppose the trade mark application within 4 months from the date of advertisement in the Trade Marks Journal. If no oppositions are filed, then the registration certificate is usually issued in approximately 3 months upon expiry of opposition period.

The trade mark status in the Indian Trade Mark Registry website shows as “Objected” when the Registrar/Examiner has raised one or more objections in the Examination Report.

After scrutinizing the trade mark application, objections may be raised by the Registrar/Examiner under Sections 9 and 11 of the Trade Marks Act.

Section 9 objections are made when the Registrar/Examiner considers the trade mark to be descriptive of goods/generic/laudatory/indicating quality or nature of goods.

In order to overcome the Section 9 objection, it is necessary to show that the trade mark is inherently distinctive.  Section 9 objection can also be overcome if the trade mark has acquired a distinctive character as a result of extensive use. For this purpose, it is necessary to submit a user affidavit along with cogent evidences to show that the trade mark has acquired distinctiveness.

Section 11 objections are made by the Registrar/Examiner when there is an identical/similar trade mark in respect of identical/similar goods/services already on record in the Trade Mark Registry. In such cases, the Registrar/Examiner issues a computer generated Search Report with the list of conflicting marks.

When the trade mark application is objected, it is stipulated that a response should be filed within one month from the date of receipt of Examination Report.

The Trade Mark Registry usually uploads the Examination Report in the online records without any intimation to the applicant or its agent. Therefore, it is desirable to submit the response within one month upon knowledge of Examination Report being uploaded in the online records. In cases where the Examination Report is received from the Trade Mark Registry, it is important that the response is submitted within one month from the date of receipt of examination report. Otherwise, the trade mark application will be abandoned by the Trade Mark Registry due to lack of prosecution.

When the trade mark is objected, it is imperative that effective arguments are put forth by submitting a suitable response to the examination report in order to overcome the objections. Once written submissions are made, the Registrar/Examiner either accepts the trade mark or posts a hearing for allowing arguments to be put forth in person. In most cases, objections can be overcome if properly represented before the Registrar.

The trade mark status in the Indian Trade Mark Registry website shows as “Marked for Exam” when the trade mark application has been assigned to an Examiner for issuance of examination report.

The Examiner scrutinizes the trade mark application to check whether the trade mark can be accepted for publication in the Trade Marks Journal, prior to registration. The Examiner checks for the following:

1.      Whether the application has been filed in the prescribed manner

2.      Whether any same/similar trade mark in respect of same/similar goods/services is there on record

3.      Whether the trademark applied for registration can be accepted for registration under  the Trade Marks Act 1999

4.      Whether any restriction, condition or limitation is required to be imposed.

The Examiner will issue a consolidated ‘Examination Report’ mentioning the objections (if any); or accept the application. In the present circumstances in the Trade Mark Registry, it takes around 12 to 18 months for the examination report to be issued.

A computer generated ‘Search Report’ is attached with the Examination Report, which lists out the conflicting marks.

The applicant or its authorized agent is required to respond to the Examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. However, in practice, the Examination Report is seldom issued by the Trade Mark Registry and is directly uploaded in the online records of the Trade Mark Registry at www.ipindia.nic.in. Therefore, it is advisable to check regularly whether the Examination Report is uploaded, so that a suitable response can be promptly filed to the objections raised in the Examination Report, if any.

The trade mark status in the Indian Trade Mark Registry website shows as “Send Back to EDP” when there are errors regarding data entry of applications which need to be rectified or when the documents are not digitized properly. In such cases, the application is sent by the Examiner/Registrar to EDP Section (Electronic Data Processing Section) for proper digitization or correction of errors. The status would remain as “Send back to EDP” till these issued are rectified by the EDP Section. Once rectified, the application advances further for examination, publication and then registration as per the statute.

The trade mark status in the Indian Trade Mark Registry website shows as “Formalities Chk Fail” when the preliminary documentary requirements are not met.

This could happen in instances such as non-filing of POA, non-filing of translation/transliteration when the trademark is not in English/Hindi, filing in wrong class, etc. In case of such an objection, the Trade Mark Registry usually uploads or sends a letter to the applicant/agent citing the reason for the objection and why the trade mark could not proceed further for examination. It is imperative that a suitable response is filed within one month from the date of receipt of such letter, failing which the trade mark will be abandoned due to lack of prosecution.

The trade mark status in the Indian Trade Mark Registry website shows as “Formalities Chk Pass” when the preliminary documentary requirements are met. The Trade Mark Registry usually checks if the basic requirements are met such as: whether the POA has been uploaded (when filed through an agent) and whether appropriate translation/transliteration (if applicable) has been filed. When such basic requirements are not met, the status could be reflected as “Formalities Chk Fail”.

After formalities check, the trade mark application still has to undergo substantive examination, where objections may be raised under Sections 9 and 11 of the Trade Marks Act, 1999.

The trade mark status in the Indian Trade Mark Registry website shows as “Send to Vienna Codification” when the trademark comprises figurative elements/logo and is being assigned a Vienna Code by the Indian Trade Mark Registry. As soon as a new trade mark application is filed, a Vienna Code is assigned if the trade mark comprises figurative elements/logo. The Vienna code is assigned based on the nature of the figurative element/logo. Such figurative elements/logos are codified according to the Vienna Agreement as per the link below:

http://www.wipo.int/classifications/nivilo/vienna/index.htm#
Vienna codification is done by the Registry so that trademark searches can be conducted for artworks/logos. Once the Vienna codification is done, there is still a long way in the trade mark registration process such as formalities check, examination, publication and then registration.