This post was first published on July 10, 2014.
Now that we have had a look at the trademark filing process in the previous post, we will move on to discuss the trademark examination process.
The process followed in the trademark registration process may be seen in the flow chart below (please click on image to view clearly):
Upon the receipt of an application for trademark registration, the Trademark Office shall allot an Application Number used as a reference number for the application. Once the application is filed, the Trademark Office shall examine the application to examine whether the application satisfies the requirements of the relevant provisions under the Trade Marks Act and Rules. The requirements under the Rules are procedural, while those under the Act are substantive in nature. Examination of trademarks is carried out with particular reference to the following sections:
- Section 2(1)(zb) – To see whether the mark comes within the scope of the definition of a trademark
- Section 9 – Absolute grounds for refusal
- Section 11 – Relative grounds for refusal
- Section 12 – Whether the mark is entitled to registration on the basis of honest and concurrent use, if proof for same is filed
- Section 13 – Whether the mark consists of the name of any chemical elements or international non-proprietary names
- Section 14 – Whether the marks consists of name of a living person or a person recently dead
- Section 15 – Whether the application is made for a part of another mark as a series
- Section 16 – Whether the association with other mark is necessary
Once the examination of the application is completed, the Examiner shall issue an Examination Report. This report shall contain the objections raised by the Trademark Office, where, normally, the main objections fall under Section 9 and 11 of the Trade Marks Act. The Response to the report should be filed within one month of receipt of the hard copy of the Examination Report.
In order to expedite the process, the Response may be filed whenever it is available in the official trademark database. The Trademark Office has facilitated the process of filing the Response online through its database. The facility also enable users to file any other forms, any amendment for the existing application, change in proprietor’s address or service address etc.
If the applicant satisfactorily meets all the objections raised by the Trademark Office, the application will be advertised in the Trademark Journal, either as accepted or as advertised before acceptance. An application may be advertised before acceptance if it relates to a mark to which section 9(1) and section 11(1) and (2) apply or in any other case where it appears that it is expedient by reason of exceptional circumstances.
Where the application has been advertised before acceptance, the Registrar may in his discretion cause the application to be advertised again. Re-advertisement of the mark may also be ordered where an error in the application has been corrected or where the application has been amended under section 22.
We will be looking into the remaining Trademark Registration process in our upcoming post.