Examination of Trademark Application for Trademark Registration

The examination of trademark application for registration of the trademark will be examined with respect to the following matters-

examination

  • Formal examination to see that the application fulfills all the procedural requirements such as filing the application in the appropriate form and manner, payment of the prescribed fees, contains the reproduction of the mark of the prescribed fees, contains the reproduction of the mark of the prescribed quality along with the required number of copies and has been filed at the appropriate office. Where priority is claimed on the basis of an earlier application filed in the applicant’s home country or in other convention countries, or exposure at an international exhibition, the examination will also see whether the application has been filed within the prescribed time (6 months) under the Paris Convention and that the specification of goods or services for which registration is sought are not wider than those on which the priority claim is based. List of goods and or services in respect of which registration is sought is given and the corresponding class or classes of the International classification is properly stated. As the application depends on the number of classes in which registration is sough, the examiner will also see the correctness of the payment.
  • Substantive examination to see the mark is capable of distinguishing the goods or services of the applicant and registrable in terms of section 9 of the Act. A search among the registered trademarks and pending applications for the purpose of ascertaining where there are on record in respect of the same or similar goods, any marks identical with or deceptively similar to the mark sought to be registered. The Registrar may cause the search to be renewed at any time before the acceptance of the application, but shall not be bound to do so. After getting the allotment of official number, the applicant, if he so desires, may make a request on Form TM-M for expedited examination, stating the reasons therefore and paying the additional fee (5 times the application fee).
  • Search of the Register for prior marks or for prior pending applications is limited to the corresponding classes of goods or services in which the registration is sought. However, cross search is made in certain cases since similar goods or services may be found in other classes. Sometimes, there may also be conflict between goods and services.

In the International Classification, broadly speaking, raw materials and unfinished products are classified according to the material of which they solely or mainly consist, whereas finished goods are classified according to the material of which they solely or mainly consist, whereas finished goods are classified according their functional purpose. Therefore, some classes contain widely different goods and very similar goods are grouped in different classes. By way of illustration, class 9 contains totally different goods such as computers. Fire extinguishers, electric apparatus, etc.. Similarly, adhesives could be found in classes 1, 3, 5 and 16, For the purpose of cross search, the approach is generally with reference to the question whether two sets of goods or services are similar. The search will also be with reference to the emblems and names (Prevention of Improper) use act in the case of names of chemical elements, the examination will be with reference to the generic names as notified by the world health organization. Section 11(2) prevents registration of trademark which is identical with or similar to earlier trademark and which is sought to be registered for goods or services which are not similar, provided that the earlier trademark is a well-known trademark in India and the use of the later mark would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark, section 11(3) prohibits registration of a mark the use of which is liable to prevented by any rule of law, passing off or copyright.  The aspects under sub-section (2) and (3) of section 11 indicated above will not be dealt with at the examination stage but will be left to be determined in the light of the opposition proceedings, if any. Section 11(5) explicitly provides for this procedure. In this connection, one important aspect to be remembered is that any objection under section 11 can be overcome where the proprietor of the earlier trademark or other earlier right consents to the trademark registration. Specific provision has been made in the statue for this purpose in section 11(4).

Office practice in respect of marks with same priority or filing date

Where a citation is found of a mark that was filed on the same day (or having the same priority date) as the application being searched, the applicant is informed of the potential conflict in the examination report. Both marks will be advertised in the journal and the two parties will have to determine conflict by way of opposition proceedings, if there is no opposition to either application, they will both proceed to trademark registration. This is regarded as an effective “cross content” and both parties will be considered to be consenting to each other’s registration without formal consents being filed. Such registration will be governed by the provisions contained in section 12. In view of the new provision enacted in Section 11(4), this practice which is followed by the UK Trademarks Office, may be expected to be followed  by the Indian Registry. The Trademarks Act, 1999 refers to “date of filing of the application”. This is the significant factor and not the time of filing. Where there have been cases where two marks have been applied for on the same day the procedure is that they both go forward to registration. If there is a dispute, that is resolved under opposition proceedings. And, if no proper right can be proved, both are registered. I further saw no significance in order of trademark application numbers, as such are allocated in a batch manner –the actual order is not necessarily in keeping with the date on which the application was made.

Applications by companies with the same common ownership

Sometimes, large companies file applications for similar marks in the names of their subsidiary companies and will seek to overcome conflict objection by consent. To avoid number of technical citations and also the need for detailed consent latter for individual applications, the earliest technical citation is recorded as a citation. If the later citations are in the name of either the applicant or the related company, and if so, no additional technical citations are made. This practice is adopted when it is clear that the proprietors of all the citations are in fact part of the same group of companies.

Objection to acceptance

If on examination of the application and of any evidence of use or of acquired distinctive character or any other matter which the applicant may or may be required to furnish, the Registrar has still any objection to the acceptance of the application or proposes to accept it subject to such amendments, modifications, conditions or limitations, if any, as he may think fit, the Registrar will communicate such objection or proposal in writing to the applicant. The registrar gives 1 month time for the applicant to respond to the official objections or requirements. If the applicant does not comply with the Registrar’s requirements or fails to submit his observations to the Registrar within the prescribed period or apply for a hearing or fails to attend the hearing, the application shall be deemed to have been abandoned.

Conditional acceptance with respect of examination

Alternatively, if the Registrar finds the application in order, he will accept the application absolutely or subject to amendments, modifications etc., under section 18(4). Thus onus is on the applicant to satisfy the Registrar that the trademark qualifies for trademark registration in as section 18(4) confers a discretion on the registrar to refuse or accept an application, subject to such modifications, conditions and limitations as the Registrar may require or impose. However, in all such cases, the Registrar is requires to communicate the objection or proposal  writing to the applicant. It is open to the applicant to agree to the requirements of the Registrar or submit his observations to the Registrar or apply for a hearing. Failure to do so within the prescribed period of one month (unless the time is extended), will result in the application being deemed to have been abandoned.

Amendments, modifications, conditions or limitations

These generally arise in respect of the specification of goods or services with a view to correctly classify them as per International Classification. It is in the interest of the applicant to apply for registration of the trademark to the actual goods or services in respect of which he is using the mark or proposes to use the mark and not for all goods or services in the designated class. The claim of use for such broad or general heading may entail not only office objection but also provoke third party opposition or subject to attack by rectification proceedings at a later stage. Apart from this, the examiner may also edit the specification of goods to bring it in line with the classification system. The section uses both the words “amendments” and “modifications”, the difference between the two terms does not appear to be significant. While the Registrar will not allow any enlargement of the specification of goods, he is empowered to amend or modify the specification of goods, so as to restrict the scope of registration. Under Section 11(10), while considering an application, the Registrar is required to take into consideration, the bad faith involved. Under section 18(1), the applicant has not only to show that he is the proprietor of the trademark but has also to show a bona fide intention to use the mark. There may be a strong suspicion that the applicant has no intention to use the mark in connection with all the goods or services and the applicant may be asked to amend or modify the goods or services unless the applicant is able to demonstrate that he is using or intends to use the trademark in connection with all the goods or services claimed. Amendment or modification may also consist of amendment of the label by deletion of signs such as “registered or regd. Or R in the circle or other matters which may offend the provisions of any of the sections of the Act. Amendment of  specification of goods may also arise in order to overcome any conflict with a cited mark.

Conditions and limitations of examination

The conditions imposed by the Registrar are generally in respect of the requirement of association of trademarks with the earlier marks, if any, of the applicant. The Registrar may also impose conditions governing the use of the mark, especially requiring the mark to be used only in the manner registered or imposing a suitable variation condition, such as, where a mark is registered for a variety of goods, that in actual use of the mark in respect of some particular goods, the reference to the goods in the label shall be varied by indicating only the name of the goods on which the mark is actually used. The condition may also pertain to two or more label marks to be used together or a condition to the effect that the mark shall be used in relation to goods when made in a specified place or territory. The term “limitation” has been defined as “any limitation of the exclusive right to the use of a trademark given by registration of a person as proprietor thereof, including limitations of that as to mode or area of use within India or outside India”. For example, In Bawa Masala Company versus Bawa Masala Co. P. ltd, High Court of Gauhati, it was found that as per the MOU between the parties, the same trademark can be used by both parties but they do business only in particular territories mentioned in the MOU. To avoid litigation, the court directed that the parties should mention on the cartons in which spices manufactured by them are packed “for sale in a particular territory” or “not for sale in a particular territory” so as to minimize the likelihood of each other encroaching upon the territory of one or other.

Hearing at the appropriate office

Where the applicant does not accept the amendments, modifications, conditions or limitations and desires to be heard in the matter, he is entitled for an opportunity for a hearing at the appropriate office where the applicant was filed.

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