A Trademark is a word, name, logo, label etc., which indicates the origin of goods and services and helps customers to distinguish the goods and services of one trader from the goods of the other. Trademarks, therefore, serve as a badge of origin to a brand in order to communicate to consumers. Trademark-related matters in India are now governed under the Trademarks Act of 1999. According to section 2(ZB) of the Indian trademarks act, 1999 a Trademark or (“TM”) is defined as a “mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include a shape of goods, their packaging, and combination of colors”. A registered trademark is represented by R in a circle ®. Trademarks are generally approved for a period of 10 years, and it is subject to renewal. To protect the mark and restrict others from using it, it must be registered as a trademark under the Trademark Act, of 1999. Any person who wants to register a trademark may file an application with the Trademark Registry. It generally takes at least 12-18 months to register the trademark with the trademark registry in India after filing an application. In the meantime, the trademark application goes through various steps of trademark prosecution, and it is simple to check the status of the trademark. However, one must know the context and meaning of those trademark statuses. In this blog, we shall discuss the list of trademark application statuses in India.
TRADEMARK STATUS AND THEIR MEANING
Once the application has been submitted with the required fee, its status will change to a new application, indicating that the Trademark Registry has now accepted the application. After that, the trademark registry will scrutinize the application to proceed further. Once the application has been submitted, the brand name or logo may be used with the “TM” indication.
SEND TO VIENNA CODIFICATION
The trademark status on the Indian Trademark Registry website shows as “SEND TO VIENNA CODIFICATION” when the trademark contains figurative elements or a logo the Indian Trademark Registry assigns a Vienna code. If a new trademark application contains figurative elements or a logo, a Vienna Code is immediately assigned. If a trademark has a logo, label, or another piece of artwork, it is given a numerical code that adheres to the Vienna Codification. This status applies to non-text trademarks such as logos, labels, figurative elements, etc.
FORMALITY CHECK PASS
The trademark status on the Indian Trademark Registry website shows as “FORMALITY CHECK PASS” when the application has complied with all the procedural formalities. The Trademark Registry usually checks all the basic requirements of an application which involves the filing of power of attorney, providing translation, goods and services as per NICE classification, necessary stamp duty and notarization required in the documents and so on. When these basic requirements are met, the status will reflect as a Formality check pass. If the application does not fulfil the basic requirements, then the status will reflect as a Formality check fail.
FORMALITY CHECK FAIL
The trademark status on the Indian Trademark Registry website shows as “FORMALITY CHECK FAIL” when the application has not complied with the basic requirements of the application such as non-filing of power of attorney, non-filing of translation and so on. If the trademark application does not adhere to the basic formality procedures, then the status will reflect as a Formality check fail. Hence the applicant of the trademark has to adhere to the formality check failure mentioned by the trademark registry.
SEND BACK TO EDP
The trademark status on the Indian Trademark Registry website shows as “SEND BACK TO EDP ” when there have been some errors during the data entry. EDP stands for Electronic Data Processing. Under the Indian Trademark Registry, all the documents and data entries are digitalized. This implies that the mentioned errors need to be rectified and corrected. Under this status, the applicant is not required to take any steps.
MARKED FOR EXAM
When the trademark application has been assigned to an Examiner for the issuance of an examination report, the trademark status on the Indian Trademark Registry website displays as “MARKED FOR EXAM”. This status signifies the starting stage of the legal process. The examiner will determine and check whether the trademark application meets the requirements for registration under the Trademark Act. Before registering a trademark, the examiner carefully examines the application to determine whether the mark can be allowed for publication in the Trademarks Journal. The following is what the Examiner looks for:
- Whether the trademark application was submitted in the correct manner.
- Whether any same trademark in respect of similar goods and services.
- Whether the Trademarks Act of 1999 will accept the trademark application for registration.
- Whether any kind of constraint, condition, or restriction is ought to be applied.
Thus, the examiner will either accept the application or produce a comprehensive “Examination Report” stating the objections (if any).
When the Registrar or the examiner has submitted one or more objections in the Examination Report, the trademark status is displayed as “OBJECTED” on the website of the Indian Trademark Registry. Under Sections 9 and 11 of the Trademarks Act, the Registrar or the examiner may make objections after carefully reviewing the trademark application. When a trademark is objected, the examiner issues an examination report against the mark. The applicant is required to respond to the examination report within one month of receiving the examination report. After receiving written objection replies, the Registrar or the examiner either accepts the trademark or schedules a hearing wherein oral arguments may be made.
When a trademark application has been approved for publication and is scheduled to appear in the Trademarks Journal, the trademark status on the Indian Trademark Registry website shows as “ACCEPTED”. Accepted denotes that no objections were raised by the examiner during the examination of the trademark. The aforementioned status may be a result of direct acceptance in the examination report or as a result of objections being overruled through written submissions or through hearings. Publication of the trademark in the trademark journal would be the next step.
ADVERTISED BEFORE ACCEPTANCE
When the trademark application has been advertised before acceptance in the Trademark Journal by the Registrar, the trademark status in the Indian Trademark Registry website displays as “ADVERTISED BEFORE ACCEPTANCE”. One of the last steps in the registration process for a trademark is this. In applications where the examiner or the hearing officer finds out any solid proof of genuine and true commercial adoption, this status will be invoked. According to the law, any third party may oppose the trademark application within four months of the day it was published in the Trademarks Journal. When an application is advertised prior to the acceptance and no opposition is filed within the allotted time, it must first be accepted by an accepting officer before the registration certificate can be granted. After the approval by the accepting officer, the trademark status changes to Accepted and Advertised and then to Registered.
ACCEPTED AND ADVERTISED
The status of “ACCEPTED AND ADVERTISED” indicates that the trademark application has been accepted by the Indian Trademark Registry and then advertised in the Trademark Journal. According to the law, any third party may oppose the trademark application within four months of the day it was published in the Trademarks Journal. If there is no opposition filed against the mark, then the trademark registration certificate is issued.
READY FOR SHOW CAUSE HEARING
According to this status, “READY FOR SHOW CAUSE HEARING” a hearing has been scheduled after the applicant filed a reply to the examination report, where the trademark examiner did not give his approval. If the applicant does not show up for the hearing on the scheduled hearing day, the mark can be rejected or refused. A hearing notice including the scheduled date of the hearing is sent to the applicant or his or her representative when the trademark is listed for hearing.
When the Registrar or the examiner is dissatisfied or rejects a trademark application after hearing the applicant’s response to an examination report, the trademark status is indicated as “REFUSED” on the website of the Indian Trademark Registry. If a third party successfully opposed the registration of the trademark, the status of the mark could alternatively be listed as Refused. The status refused implies that the trademark application is not active. According to section 91 of the Trademarks Act, an appeal can be filed with the Intellectual Property Appellate Board (IPAB) within three months of a trademark being refused.
When an applicant submits a request to voluntarily withdraw the application, the trademark status on the Indian Trademark Registry website displays as “WITHDRAWN”. The trademark application will be marked as withdrawn whenever the applicant willingly withdraws it. In these cases, the applicant or his/her agent has to submit a letter of withdrawal to the Trademark Registry.
When the applicant does not react or respond within the stipulated time period required by the Act, the trademark status is displayed as “ABANDONED” on the Indian Trademark Registry website. This status implies that the trademark is not active. The trademark application can be abandoned under these cases:
- Lack of response to an examination report within the stipulated time period.
- No one attended the show-cause hearing when it was posted.
- No counter-statement has been submitted within 2 months from the date of receipt of the notice of opposition.
Any third party may file an opposition to the registration of a trademark within four months of the date the trademark is advertised in the Trademarks Journal. When an opposition has been lodged by a third party, the trademark status is displayed as “OPPOSED” on the website of the Indian Trademark Registry. When a comparable trademark is published in the Journal a third party files an opposition. When a third party files a notice of opposition, the status of the trade mark changes from Accepted and Advertised to Opposed. Under this status the applicant must submit a counter statement within two months of receiving the notice of opposition; otherwise, it would be assumed that the applicant has no interest in arguing the opposition. When the applicant files the counter statement for the served opposition the opponent is required to file the evidence in favour of the opposition within two months of the date on which the counter statement was received after the applicant. After receiving the evidence in support of the opposition, the applicant has two months from that date to file the evidence in support of the application. This concludes the documentation stage in the opposition proceedings. The Registrar then hears arguments from both parties or through their representatives before making a decision. The opposition process under trademarks is too lengthy, and it typically takes years for the Registrar to issue an order.
When the Registrar issues the trademark registration certificate, the trademark status on the Indian Trademark Registry website displays as “REGISTERED”. After this final stage, the applicant is given the right to place the ® sign next to the trademark and is recognised as the registered owner of the mark. The registered trademark is valid for ten years from the date of application and it must be renewed ten years prior to expiration. The renewal application can be submitted within six months before a trademark expires. After a trademark expires, there is a grace period of six months during which the registration may be renewed by paying an additional fee. After a six-month grace period, if the trademark registration is still not renewed, it may be restored and renewed within a year of its expiration with additional fees. If one year grace period has also been passed, then there is no applicability to restore or renew the trademark.
When the applicant fails to renew the trademark registration certificate within the prescribed time period, the trademark status on the Indian Trademark Registry website displays as “REMOVED”.
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How to file for Trademark?
- Contact a lawyer who specializes in IP cases
- He/she will advise you to protect your IP’s, then he/she will draft an application which states that you want to file an IP application and it should be signed by both lawyer and the party.