A trade mark application is usually examined within 3 to 6 months of filing in India and the time frame may vary depending on backlog of Indian Trade Marks Office.
The IPO examines all applications in respect of both ABSOLUTE GROUNDS and RELATIVE GROUNDS. The IPO also examines all applications in respect of formal requirements of payment of excess characters fee, filing of priority documents with translation, filing of power of attorney, proper adherence to classification, filing of translation and transliteration etc.
ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION:
Section 9 of the Act lays down the absolute grounds of refusal of registration which primarily comprise refusal due to:
- lack of distinctive character;
- marks serving in the trade to designate kind, quality, quantity, intended purpose, values, geographic origin or time of production of goods or rendering of service or other characteristics of goods or service;
- marks having become common to trade; (all of above may however be overcome by showing acquired distinctiveness due to use or in case of a well-known mark);
The above mentioned grounds may however be overcome by showing acquired distinctiveness gained by the mark due to its extensive and continuous use or by virtue of it being a well-known mark.
Other absolute grounds of refusal include:
- marks being of such nature to deceive public or causing confusion, containing any matter likely to hurt religious susceptibilities, comprising any scandalous or obscene matter, or being prohibited under Emblems and Names (Prevention of Improper Use) Act;
- marks consisting exclusively of shape of goods resulting from nature of goods, or necessary to obtain a technical result or giving substantial value to the goods.
Section 11 of the Act lays down the relative grounds of refusal of registration which primarily comprise refusal due to:
- existence of a likelihood of confusion on part of the public due to an earlier identical or similar mark for identical or similar goods/ services, including likelihood of association with the earlier trade mark;
- a conflicting well-known mark;
- violation of any law, particularly law of passing off or copyright.
Prosecution (Filing Of Response To Examination, Hearing)
The applicant is required to file a response to an examination report within 30 days of receipt of the same. The IPO encourages e-filing of responses and issued a notification to this effect in March 2011. The same may be accessed at http://ipindia.nic.in/iponew/PublicNotice_TMR_10March2011.pdf
After a response is filed, the application is either allowed for publication or scheduled for a hearing. The hearing may take place within 3-12 months of filing of the response and the IPO usually fixes bulk hearings in certain months to clear backlog while there is no activity in other months.
At the hearing, a hearing officer reviews the case and on hearing the arguments of the applicant's counsel, decides the application for allowance or rejection.
If an application is allowed, it proceeds to publication. If an application is rejected, the applicant may file an appeal or a review in the matter.
An application is published in the Trade Marks Journal after allowance and most applications are published with a few weeks of allowance.
If there is no opposition within a period of 4 months of publication, the mark proceeds to registration.
In case there is no opposition or an opposition is decided in favour of the applicant, the application proceeds to registration. A trade mark is registered as of the date of making the application for registration of that trade mark.
Duration And Renewal
A trademark registration is valid for ten years counting from the filing date. The registration can be renewed for an unlimited number of successive ten-year periods.
The proprietor of the trademark can renew his trademark registration from six months before the expiry date up to six months after the expiry date. The proprietor of the trademark has to file Form TM-12, which is an application for renewal before the Registrar. 1 – 3 months before the expiration of the registration, if no application for renewal has been filed, then the Registrar shall send a notice to the proprietor informing him of the upcoming renewal date. It’s pertinent to note that no trademark can be removed, if notice of renewal has not been served. Along with the application for the renewal, the proprietor has to pay a renewal fees as prescribed. Failure to pay such fees will cause the removal of the Trademark from the register.