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].
