The introduction of online trademark registration in India has enhanced trademark filing efficiency and transparency. After 5 years of continuous use from the date of federal registration, a trademark may be considered incontestable. Before a trademark application can be registered, it must pass through several rounds of review. These stages or statuses are described briefly below.
New Application status
The trademark application has been stored in a database for the first time.
Status: Submitted to the Vienna Codification Commission
This procedure applies to non-text trademark applications that include a logo or artwork. If a trademark application includes logo/figurative components, it is assigned a Vienna code at the time of filing. The register is in charge of the Vienna codification procedure, which allows for logo/artwork trademark searches. Following this, there is still a long way to go in the registration process, which includes an examination, formality check, public caution, and registration.
Formalities are checked and passed.
When all of the basic filing requirements for trademark registration are met, the status on the Indian trademark registry website is updated to ‘Formalities chk pass.’ In this step, the trademark registrar verifies the basic formality requirements, such as:
- Whether or not an acceptable translation/transliteration has been filed (if applicable).
- If the POA has been uploaded or not (if filed through an agent)
The status information is reported as ‘Formalities chk fail’ if these basic prerequisites are not met. The trademark application is next subjected to a substantive examination when this step is completed. Objections can be filed under Sections 9 and 11 of the Trademarks Act of 1999 during this time.
Examined status
The Indian trademark registration website displays the status ‘Marked for exam’ when a trademark application is assigned to an examiner for issuance of the examination report.
The examiner analyzes the trademark application to see if the trademark can be published in the trademarks journal prior to registration. The following checks are carried out to ensure that:
- Whether the application was filled out in the prescribed manner.
- Is there any record of a similar trademark for the same or related services/goods?
- If the trademark application is accepted for registration under the Trademarks Act of 1999,
- Is it necessary to apply any conditions, limitations, or restrictions?
The examiner will next provide a unified “Examination report” in which he or she will either specify any objections to the application or accept it. It takes 12 to 18 months for the examination report to be produced after this procedure.
Objection status
The status of your trademark application will be marked as ‘Objected’ if the examiner/registrar expresses objections in the examination report. The examiner/registrar may make objections under Sections 9 and 11 of the Trademarks Act after the application has been evaluated.
When the examiner/registrar believes the trademark is descriptive of generics, laudatory, or suggesting the nature or quality of the goods/services, for example, objections are likely to be made under Section 9.
To overcome this issue, it is necessary to demonstrate that the trademark is distinctive and does not fall into any of the categories listed above. This argument can also be overcome if the trademark has formed a distinct personality as a result of its widespread use. It is necessary to submit a user affidavit with convincing evidence that the trademark has acquired uniqueness through continuing use for this purpose.
When a similar/identical trademark in similar/identical classes of services/goods is already on record in the trademark registry, the examiner/registrar can file a Section 11 objection. In this situation, the examiner/registrar issues a computer-generated search report containing a list of contradictory marks.
Exam Report Has Been Published
When a trademark application is accepted for publication and is due for publishing in the trademarks journal, the trademark status will reflect as ‘Exam report issued.’ This status code denotes whether the trademark has been accepted in the initial examination report or if the applicant has overcome the objections through a written submission or a hearing.
Refused status
The trademark status at the Indian trademark registry website is ‘Refused’ if the examiner/registrar declines a trademark application after hearing or reviewing the applicant’s answer to an examination report.
In circumstances where a third party successfully opposes the registration of a trademark, the trademark status can alternatively be read as “Refused.” This status can be challenged by filing a petition with the intellectual property appellate board (IPAB) within three months under Section 91 of the Trademarks Act.
Status of Adv Before Accepted
If a trademark application is advertised before it is accepted by the registrar in the trademark journal, the trademark status on the Indian trademark registry website will be ‘Adv before accepted.’
This status allows any third party to file an opposition to the trademark application within four months of the publication date in the journal.
When an application is publicized prior to the acceptance and no opposition is filed during the time of opposition, the application must be accepted by an Accepting Officer right before the registration certificate is issued. The trademark status changes to ‘Advertised and accepted,’ and then to ‘Registered,’ once this is completed. The registration certificate is usually issued three months after the opposition period has expired.
Opposition is present.
If a third party files an opposition to the trademark registration within four months of the trademark being advertised, the trademark status on the Indian trademark registry website will be ‘Opposed.’
When a comparable trademark is published in the magazine or the trademark is alleged to be non-distinctive, a third party frequently launches an opposition.
After a third party files a notice of opposition, the trademark status switches from “Advertised” to “Opposed.” This notice, which specifies the grounds for the opposition, is served on the applicant. The applicant must file a rebuttal statement within two months of receiving the notice of objection. If the register does not receive a counter statement within the specified time frame, the trademark application status is changed to “Abandoned.”
Withdrawn status
If the applicant files a voluntary request to withdraw the application, the trademark will appear as ‘Withdrawn’ on the Indian trademark register website.
Status of removed from the list
If a trademark has been withdrawn from the Indian trademark registry, its status will be listed as “Removed” on the website of the Indian trademark registrar. In the eyes of the law, the mark is no longer trademarked.
Registration status:
When the trademark status on the Indian trademark registry website says “Registered,” it signifies the Registrar has issued the trademark registration certificate. After then, the applicant becomes the trademark’s registered owner. After then, the applicant can use the ® symbol next to the trademark. Trademark registration is valid for ten years from the date of application under the current Act. It’s important to remember and renew it every ten years before it expires.
Trademark registration is a time-consuming and intricate process that involves substantial documentation and a boatload of knowledge. This is why, while registering or renewing a trademark, we encourage using the services of trademark experts like FileMyBrand. Don’t wait any longer; contact our staff right away!
