One the Trade Mark application is filed, it will be assigned to the Trade Mark Examiner for the purpose of examination of the same, the examiner looks at the application details and the original application and scrutinizes the application as to:

• whether the application has been filed in the manner as prescribed in the Trademarks Rules 2002.
• whether the trademark applied for registration can be refused registration (- on relative grounds and/or absolute grounds) under the Trademarks Act 1999, if yes, the reasons; and
• whether any restriction, condition or limitation is required to be imposed, in case the application is accepted for registration,

The Examiner shall thoroughly examine the application as above and make a search of earlier trademarks which are identical with or similar to the mark being examined and shall prepare his consolidated examination report through the system containing therein, as for as applicable.

• all the objections relating to formality requirements as to filing of application,
• objections to acceptance of the application for registration of the trademark under Section 9, 11 and other Sections of the Trademarks Act 1999, and
• proposals for conditions of acceptance or limitation to use of the mark, in case the application is accepted for registration.

The trade mark may be objected by the trade mark examiner, general public or a third party. The trade mark examiner may object the trade mark if the application is incomplete or if the applied trademark is similar to that of already filed/registered application.

And the general public or a third party may oppose the trade mark application if it is similar to their trade mark. The opposition can be filed before it is registered or when it is accepted for publication in a trademark journal.

The application status will be changed to “Opposed” once a trademark objection is lodged. In case of a registered trademark, the Registrar of Trademarks will designate it as ‘Objected.’ The applicant/trademark user will be provided with a notice alerting him of the objection and the grounds for opposition.

The following are the grounds on which a trade mark application is objected/opposed:

• 1

  Trade Mark Application Form

  The trade mark examiner may object the application if it is not submitted in correct application form. In case the application is not on proper form, the examiner shall examine the application as per the nature of the application submitted irrespective of the form number mentioned and require the applicant to correct form of the application by filing a request on form TM-16. The objection, for example, should be raised as follows:

  The application is made on form TM-1, for certification mark in respect of goods or services falling in a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16.

• 2

  Name of the Applicant

  The examiner shall ensure that the name of the applicant claiming to be owner of the trademark is properly mentioned in the application. In case the name of the applicant is not appropriately mentioned, the Examiner should raise objection as follows:

  The application appears to have been filed in the name of a partnership firm, names of all Partners of the firm should be brought on record by filing a request form TM-16.

• 3

  TM-48 / Power of Attorney

  The examiner shall ensure that duly stamped TM-48/Power of Attorney is filed; in case the application has been submitted by a person other than the applicant. In case no proper Power of Attorney is submitted and the application has been submitted by a person other than the applicant, the Examiner should communicate objection as:

  The application has been submitted by a person other than the applicant, a duly stamped Power of Attorney in favour of a particular agent should be filed.

• 4

  Principal Place of Business

  The examiner shall ensure that the applicant’s principal place of business and the address for service of the applicant is properly mentioned in the application. If the Principal Place of business of the applicant is not mentioned, or if the applicant has no Principal Place of business in India and the applicant’s address for service in India is not mentioned, the Examiner shall communicate objection as follows:

  The Principal Place of business of the applicant should be brought on record by filing a request on form TM-16, or The applicant’s address for service in India should be brought on record by filing a request on form TM-16, since the applicant has no principal place of business in India.

• 5

  Transliteration and Translation of Trade Mark in non-English or non-Hindi characters

  If the trademark applied for registration is in a language other than English or Hindi, the examiner shall ensure that a transliteration is properly mentioned in the application. If the trademark applied for registration is in a language other than English or Hindi, the Examiner shall defer the examination; and communicate it as deficiency to the applicant concerned and require the applicant to provide a sufficient transliteration into roman script and its translation in English by filing a request on form TM-16. The objection, for example, should be raised as follows:

  The trademark applied for registration is in a language other than English or Hindi; you should provide the transliteration of the mark into roman script and its translation in English by filing a request on form TM-16. Only after compliance of this the application shall be further examined.

• 6

  Consent of a Person or his Legal Representative

  If the trademark applied for registration contains a name or representation of a person, the Examiner shall ensure that the consent of that person or his legal representative is submitted with the application. If the trademark applied for registration contains a name or representation of a person in it, and no consent of that person or consent of his legal representative (if that person is dead) is submitted, the Examiner shall communicate objection as follows:

  The identity of the person, whose portrait appears on the trademark, should be disclosed and the consent of that person or, the consent of his legal representative, if he is expired, should be furnished in writing.

• 7

  Ensuring submission of draft regulations in case of an application for registration of a collective mark

  If the application is made for collective mark on form TM-3, TM-64, TM-66 or TM-67, the Examiner shall ensure that a draft regulation on form TM-49 regarding association of persons authorized to use the mark is submitted along with the application. If the application is made for registration of a collective mark on and no proper draft regulation on form TM-49 is submitted with the application, the Examiner shall defer the examination; and communicate it as deficiency to the applicant concerned and require the applicant to furnish proper draft regulation on form TM-49 by filing a request on form TM-16. The objection, for example, should be raised as follows:

  A proper draft regulation on form TM-49 as per Rule 128 of the Trade Marks Rules 2002 should be submitted with the application by filing a request on form TM-16. Only after compliance of this the application shall be further examined.

• 8

  Ensuring submission of draft regulations in case of an application for registration of a certification mark

  If the application is made for Certification mark on form TM-4 or TM-65, TM-68 or TM-69, the Examiner shall ensure that a draft regulation on form TM-49 regarding competence of the proprietor for certification of relevant goods or services, is submitted along with the application. If the application is made for registration of a Certification mark on and no proper draft regulation on form TM-49 is submitted with the application, the Examiner shall defer the examination; and communicate it as deficiency to the applicant concerned and require the applicant to furnish proper draft regulation on form TM-49 by filing a request on form TM-16. The objection, for example, should be raised as follows:

  A proper draft regulation on form TM-49 as per Rule 135 of the Trade Marks Rules 2002 should be submitted with the application by filing a request on form TM-16. Only after compliance of this the application shall be further examined.

• 9

  Ensuring submission of adequate priority documents, in case of applications with priority claims

  If the application is made on form TM-2, TM-37, TM-52, TM-64, TM-65, TM-67 or TM-69, with priority claim by virtue of similar application made in any conventional country, the Examiner shall ensure that documents in support of priority claim are submitted along with the application. If the application is made on form TM-2, TM-37, TM-52, TM-64, TM-65, TM-67 or TM-69, with priority claim by virtue of similar application made in any conventional country, and no document in support of priority claim is submitted, the Examiner shall communicate the objection as follows:

  Authentic documents in support of priority claim should be filed.

• 10

  Examination of application as to classification of goods and services

  The examiner shall ensure that the application for registration of a trademark has been filed with proper specification of goods and/or services and with proper classification of such goods and/or services. In case the class of goods or services mentioned in the application is other than the relevant class of the International Classification of Goods and Services, as published by the Registrar of trademarks, and no aspect of such goods or services falls in the class mentioned in the application, the Examiner shall suggest the appropriate class for those goods or services and require the applicant to correct the class through a request on form TM-16.

  For example, if an application for registration of trademark in respect of ‘cosmetics’ is filed in class 34, the Examiner shall require the applicant to correct the class as ‘3’ by a request on form TM-16.

• 11

  Examination of application as to relative grounds for refusal of registration

  The Examiner shall make a search of same or similar earlier trademarks in respect of same or similar description of goods or services, and in case such earlier trademarks are found in the name of persons other than the applicant, he shall raise objection to acceptance of the application for registration on relative grounds. In case, same or similar earlier trademarks of different persons are found on records in respect of same or similar description of goods or services, the Examiner should raise objection as follows:

  The trademark applied for registration is not registrable under Section 11(1) of the Trade Marks Act 1999 since identical or similar marks in respect of identical or similar description of goods or services are there on records and because of such identity or similarity of marks and goods or services there exists a likelihood of confusion on the part of the public.

• 12

  Examination of application as to absolute grounds for refusal of application for registration

  The examiner shall examine the application to see as to whether the trademark applied for registration is capable of distinguishing goods or services of one person from those of other and its registration is liable to be refused registration under Section 9 of the Trade Marks Act 1999.

  The trade mark is of devoid of distinctive character, trademarks which consist exclusively of marks or indications which may serve in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or of rendering of services, or other characteristics of goods or service and trademarks 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.

After conducting the examination, if it is objected, the trademark examiner issues an examination report listing out the objections why the trademark is objected for registration and all these objections and relevant provisions are stated in trademark examination report. Normally, within 3 to 6 months, the examination report is issued by the trademark examiner.

The reply has to be filed within 30 days from the date of examination report, failing which the trademark application may be treated as abandoned by the Trademark Registrar. However, the time period of 30 days for filing examination report reply can be extended on payment of Rs.900/- if it is online otherwise Rs.1000/-.

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