Perry4Law and Perry4Law Techno Legal Base (PTLB) have already discussed the required documents and formalities for trademark registration in India. The trademark law of India is incorporated in the Trade Marks Act 1999 and the procedure for registration of trademarks in India is governed by the same.
In this article Perry4Law and PTLB would discuss the process of examination of trademark applications under the Trade Marks act 1999. Once the data entry (including scanning and Vienna codification of non-text trademarks) of application for registration of a trademark is complete the same is sent for examination.
The Examination of Trade Mark application by the Examiner must ensure that the applicant has complied with:
(1) Filing requirements governed by procedure prescribed under the Trade Marks Act and Trade Marks Rules.
(2) Substantive requirements for registrability of the mark
The Examiner must pay a special attention to ascertain:
(1) Whether the application has been filed in the manner as prescribed in the Trade Marks Rules 2002.
(2) Whether any same/similar 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 doing the examination work will give a consolidated “Examination Report” mentioning the objections (if any) as to the acceptance of application for registration; or as the case may be, forward a proposal to accept the application with or without any restriction, condition or limitation on the use of trademark.
A computer generated “Search Report” short listing conflicting marks on record will be attached with the Examination Report. The examiner will mention all existing deficiencies in the application and will raise all applicable objections to the acceptance of application for registration of trademark. The applicant or its authorised 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. The reply to the Examination Report together with evidence of use of the trademark in India and other documents attached with the reply will be duly considered. In case the objections cannot be waived an opportunity of a Hearing will be given to the applicant. The application will thereafter be accepted with or without any restriction, condition or limitation on the use of trademark; or as the case may be, it will be refused for registration. The decision as to acceptance or refusal of the application will be communicated to the applicant. The accepted application will thereafter be advertised in the Trade Mark Journal.
The examination of trade marks for acceptability under the Trade Marks Act 1999 must be by reference to the provisions of that Act and Rules framed there under taking into account the established practice of the Registry and the law as laid down or endorsed by the Intellectual Property Appellate Board (IPAB) and by Courts in India which is binding on the Registrar.
Section 91 of the Trade Marks Act, provides for an appeal against an order or decision of the Registrar to the Intellectual Property Appellate Board (IPAB). In some cases, parties may also invoke the writ jurisdiction of High Courts. It is obvious, therefore, that whenever the Registrar or any officer acting for him passes an order as a tribunal under the Act it should be a reasoned and a speaking order. [See Rule 40 of Trade Marks Rules, 2002].