Trademark is essentially another word for brand or brand name. A trademark can be any name, word, symbol, slogan, or device that serves to both identify and distinguish a business or product from others in the market. Once you have trademarked your business, if someone else makes an attempt to use something similar enough to confuse customers, you have the right to legally protect yourself and stop the other party.
Every application for the registration of a trademark in respect of any goods or services is acknowledged by giving a system generated electronic receipt or sending such receipt to the e-mail address provided for the purpose. Now, once you have made an application for registration of your trademark, then the application is scrutinized by the Registrar and the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modification, conditions or limitations, if any as he may think fit. Moreover, the Registrar may even, on application made to him in the prescribed manner by any person who proposes to apply for the registration of a trade mark, give advice as to whether the trade mark appears to him prima facia to be distinctive. In such cases, Form TM-M shall be filed.
Further, the Registrar shall cause the application to be examined wherein a search is conducted amongst the earlier trademarks, registered or applied for registration, for the purpose of ascertaining whether there are on record in respect of the same goods or services or similar goods or services any trademark identical with or deceptively similar to the trademark applied for. The status of the trademark application can be checked on http://ipindiaonline.gov.in/eregister/eregister.aspx by entering the application number that is also mentioned on the paid receipt of your application. It is always recommendable to check the status of mark at least once in a week.
Therefore, once application is made, the Registrar might do the following:
- Require the applicant to file Form TM-M.
- Approve the application and cause the trademark to be published in the Trademark journal.
- Issue examination report.
In routine, the Registrar of Trademark issue objections under Section 9 and Section 11 of the Trademarks Act, 1999 as explained below:
- Section 9: This section provides for absolute grounds of refusal and the objection under this section is raised under the following cases:
- When the mark is not capable of distinguishing the goods or services of one person from those of another person;
Eg: Use of general word such as “salt” in your mark.
- When the mark consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services;
Eg: Use of word “Delhi” in a trademark
- When the mark consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.
Eg: Use of word “pizza”
- When it is of such nature as to deceive the public or cause confusion;
- If it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
- If it comprises or contains scandalous or obscene matter;
- If its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
- Section 11: This section provides for relative grounds for refusal due to the following reasons:
- The mark is identical or similar with an earlier trade mark and there exists a likelihood of confusion on the part of the public when the goods description for which the mark is intended to be use is same;
Eg: the mark “Moffy” and “Moffie” in a readymade garments business
- The mark is identical or similar to an earlier trade mark and the goods description of the instant mark and the similar/identical mark is different but the later one is well-known mark in India.
Eg: the mark “Airtel” in the telecommunication business and “Airtel” in footwear business.
TIPS FOR DRAFTING REPLY TO EXAMINATION REPORT:
1. The examination report shall be read repeatedly and thoroughly.
2. In case the objection is raised under Section 11, then status of all the cited marks in the examination report shall be reviewed individually.
3. To begin with, the current status of the mark with the department shall be briefed with.
4. Thereafter, the brief introduction of the applicant of the applied mark shall be given.
5. The services that are provided by the applicant pertaining to which the mark is being used shall be cited very briefly.
6. One to one comparison between the cited and instant marks shall be explained in all possible ways i.e. phonetically, visually, structurally, etc.
7. Cite at least 3-4 case laws supporting your contentions.
8. Mention revenue and expenditure pertaining to the mark along with the evidences.
9. Ideal page limit for filing reply to examination report is of 3 pages. However, if the case demands, it can extend maximum up to 4.
10. At the end, there shall be a prayer clause.
Note that in case the objection is raised by the Trademark Department, the requisite reply must be filed within one month from the date of receipt of the examination report otherwise the application shall be abandoned. If the response to the report is filed within the aforesaid time, the same shall be duly considered and if the Registrar accepts the application for registration, he shall advertise the mark as accepted in the Trademark Journal but if the response to the report is not found satisfactory or where the applicant has requested for hearing, the Registrar shall provide an opportunity of being heard to the applicant.
Further, in case the Registrar has scheduled hearing, the status of the mark on the trademark portal shall be shown as “Ready for show cause hearing”. In case the applicant fails to appear at the scheduled date of the hearing, the Registrar may treat the application as abandoned and if he/she has appeared in the hearing in the hearing and made his submissions, the Registrar shall pass appropriate order.
{The author is a Company Secretary in Practice and can be reached at (M) 9999952595 and (E) cskajalgoyal@gmail.com}
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