The application for the registration of trademark examined by the examiner to see that it fulfills all the procedural requirements such as filing the application in appropriate form and manner, payment of the prescribed fee, that it contains the appropriate description and is properly classified. In case, of an International Application which claims priority on the basis of an earlier application filed in the applicant’s home country or in any convention country, the application is filed within 6 months as per Paris convention.
Examiner is further obligated to see whether the trademark applied is capable of being registered keeping in mind the absolute grounds of refusal or relative grounds of refusal as prescribed under Section 9 and 11 respectively. In case of an expedited examination, the registrar has to be satisfied with the reasons of seeking expeditious examination of the trademark. Normally, the examination report is released within 3-6 months, however, in case of expeditious examination, it has to be issued within 3 months.
Reply to TM Examination Report
If the examiner gives a favorable report then there is no need to reply to such an examination report as it automatically gets forwarded by the examiner for publication in the trademark journal. However, in case the examination report is adverse then the same need to be properly and thoroughly replied along with pieces of evidence if any within a period of 30 days from the date of its receipt. Following are the some of objections raised in an examination report, which need to be replied.
1. Objection to acceptance
The examiner will see whether the applied trademark is capable of being graphically represented or that it is distinct from goods or services of others. Any such objection in the examination report must be objectively and positively countered by quoting relevant provisions of law and judgments of courts. The reply should be drafted carefully with a view to persuade and satisfy the examiner with respect to each and every ground on which he has objections to acceptance. Nevertheless, the reply to the examination report must be filed within 30 days of its receipt.
2. Conditional acceptance
The registrar may find the application in order, however, he may require some modification or amendment in the application. Under the ™ act, the registrar has some discretionary powers under which he may refuse or accept the application subject to such modification, conditions and limitations as the as may be required. The onus is on the applicant to satisfy the registrar, which he can do by filing an appropriate reply to the examination report which comes up with conditional acceptance.
3. Registrar objection based on the absolute grounds of refusal under Section 9
It deals with the objections that are primarily related to the mark itself and which are not register-able due to their inherent problems. This ground of refusal is primarily aimed at protecting the interests of general public instead of any specific third party.
4. Registrar objection based on the relative grounds of refusal under Section 11
A trademark faces this objection while its registration on the ground of same or similar trademark has been already registered or applied 4 before the registry of Trademark by some third party. The purpose of this grounds of refusal is to protect, rights of the party holding a similar or identical trademark and also to safeguard general public from confusion or deception as to the origin of the goods or services.
5. Examples of grounds on which the registrar refuses the application
- The application is not made in the manner prescribed by the rules.
- he registration of attracts any of the absolute grounds for refusal under Section 9 or any other relative grounds for refusal under Section 11.
- The trade mark offends against Section 13 and in the case of textile trademarks against Section 80 also.
- The applicant does not agree to any of the amendments, modifications, conditions or limitations imposed by the Registrar.
- The applicant is not entitled to claim proprietorship to the trademark under Section 18 or has never used and has no bonafide intention to use the mark in respect of the goods for which he seeks registration.
- The mark is common to the trade.
- The applicant does not agree to the association of the mark as required by the Registrar.
- The Registrar may withdraw the acceptance before registration on the following grounds, namely.
- The application has been accepted in error, or
- In the circumstances of the case the trademark should not be registered or should be registered only subject to conditions or limitations or to conditions additional to or different from those subject to which the application has been accepted.
- After acceptance of an application, registration may still be refused on any of the following grounds.
- The application has been successfully opposed.
- In the circumstances of the case or on directions of the Central Government, the trademark should not be registered [Section 23(1)].