After an application is filed, it is examined by the Examiner of Trademarks. The Examination Report (Office Action Report) is sent usually within 30 days of filing stating the grounds of refusal to register a Trademark, if any. 

 

The new Trademark Act, 1999 does not define the marks which are registrable but defines which marks are not registrable under the two headings - Absolute grounds or on Relative grounds. 

 

The Absolute grounds of refusal are:

 

Absolute grounds for refusal of registration.—

(1) The trade marks—

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

(2) A mark shall not be registered as a trade mark if—

(a) it is of such nature as to deceive the public or cause confusion;

(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;

(c) it comprises or contains scandalous or obscene matter;

(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).

(3) A mark shall not be registered as a trade mark if it consists exclusively of—

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods. Explanation.—For the purposes of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration.

 

 

The Relative grounds of refusal are:

 

Save as provided in section 12, a trade mark shall not be registered if, because of—

(a) its identity with an earlier trade mark and similarity of goods or 

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account—

(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trade mark applies.

(8) Where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

(9) The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:—

(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered;

(iii) that the application for registration of the trade mark has been filed in India;

(iv) that the trade mark—

(a) is well known in; or

(b) has been registered in; or

(c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or

(v) that the trade mark is well-known to the public at large in India.

(10) While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall—

(i) protect a well-known trade mark against the identical or similar trade marks;

(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.

(11) Where a trade mark has been registered in good faith disclosing the material informations to the Registrar or where right to a trade mark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trade mark or right to use that trade mark on the ground that such trade mark is identical with or similar to a well-known trade mark.

 

 

To overcome these objections, a written submission is to be made within a period of 30 days with suitable evidence, preferably, in the form of an Affidavit. 

 

If the Examiner is satisfied with the reply, he may accept the application or call for a personal hearing before the Asst. Registrar of Trademarks before whom the matter is required to be argued. If the Asst. Registrar is satisfied with the arguments and the evidences submitted in support thereof, he will accept or reject the same as the case may be. 

 

ADVERTISEMENT: 

 

Once the application is accepted, it will be advertised in Trademarks Journal in due course of time.  

 

OPPOSITION: 

 

Once the application is advertised, any aggrieved person, may, within a period of three months from the date of publication of the Journal or availability of the Trade Mark Journal, which ever is later give Notice of Opposition in writing stating the grounds of opposition to the registration of advertised mark. This period of three months may be extended for a period of one month. 

 

The Applicant will then be required to file its Counter Statement within a period of two months from the date of receipt of Notice of Opposition. 

 

Thereafter, both the parties are required to file evidences in support of opposition in a form of Affidavit and after giving an opportunity of being heard, the matter is decided by the Registrar.

 

REGISTRATION: 

 

If there is no opposition or if any opposition is decided in favour of the Applicant, the mark is entered in the Register and a Certificate of Registration is issued accordingly.