In this article, Deepshikha Sarkar discusses Replying to the Trademark Examination Report.
What is a Trademark Examination Report?![Trademark Examination Report]()
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After an application for trademark registration is made, it is analyzed by trademark examiners.This is done within a period of six months to one year from the date of filing. The officials scrutinize the application forms, the mark and also run their own trademark search.
The trademark office scrutinizes the fulfillment of procedural requirements of the Reply to the Examination Report. Like Form, manner, prescribed fee payment, proper classification, etc.
After this process, they take note of their opinions and analysis about the Scope of the mark getting registered, in which they usually give out reasons as to why the applied mark should not be registered under the Trademark Law. All of these objections along with the statutory provisions are put together in the form of a Trademark Examination Report. The trademark examination report is also put up on the trademark office website along with details of the trademark application.
What is an Examination Report Reply?
It is required that the Applicant replies within 30 days from the date of receipt of the examination report. This document is known as Trademark Examination Reply.
The response to an objection in a trademark examination report can be submitted by the trademark applicant. The response can also be made by an agent authorized by the trademark applicant. This authorization is made by a Power of Attorney by the virtue of Form TM48 under the Trade Marks Act, 1999. This response is called “Reply to Examination Report”.
The Reply can be submitted by email by attaching a scanned copy in colour pdf format to .tmr@nic.in OR uploaded online to the website of the trademark office. It could also be submitted in person or by post to the relevant trademark office. Affidavits and documents (as per requirements) should be submitted along with the Reply to the Examination Report.
What are the objections usually raised in an Examination Report?
OBJECTION PERTAINING TO A FORMAL REQUIREMENT
In such cases, the Applicant must compulsorily comply as these are requirements laid down in the statute and required by the office.
For example, if the trademark office has called for the attachment Form TM48, the Trademark Applicant may submit the same with supporting documents in case an agent is applying for the trademark in place of the Applicant in person or state that the Application is being made by the Applicant in person.
OBJECTION PERTAINING TO INCORRECT CLASSIFICATION
If the objection is because the goods and services mentioned in the application and the trademark class so mentioned are not in consonance, the Trademark Office will object.
It is important to note that it is advisable to get proper legal advice as to the correct classification of goods and service, prior to submitting a Reply to Examination Report for objection as to the wrong classification of trademark class.
OBJECTION 2A
OBJECTION STATING THAT NONE OF THE GOODS OR SERVICES MENTIONED IN THE APPLICATION FALL IN THE CORRECT TRADEMARK CLASS.
The trademark applicant may file a request to correct the class of goods or assert in the form of a statement that as per classification of goods or services published by the Registrar, the goods and services have been correctly classified.
OBJECTION 2B
OBJECTION TO THE EFFECT THAT SOME GOODS OR SERVICES MENTIONED IN THE APPLICATION DO NOT FALL IN THE CLASS.
The trademark applicant may file a request for amendment of the application by deleting items that do not fall in the relevant class. And then subsequently apply for those goods/services separately under the appropriate class(es) OR The applicant can also state that as per classification of goods or services published by the Registrar, all items fall in the class mentioned in the application.
OBJECTION PERTAINING TO ABSOLUTE GROUNDS
Section 9, Trade Marks Act, 1999 deals with ABSOLUTE GROUNDS. These objections are primarily related to the mark itself and which are not register-able due to their inherent problems. This ground of refusal is primarily aimed at protecting the interests of general public instead of any specific third party.
As per Sec 9(1) of the Trade Marks Act, 1999 a trademark should be distinctive and non descriptive. That means it should be distinct in itself and it should not be indicating the goods it stands for nor should it be common to the trade in which the Mark would do to business in.
For example, If the wordmark “Apple” is chosen by a company selling Apples then it would be a descriptive trademark but if the wordmark “Apple” is chosen by a company selling computers then it is a non descriptive trademark. Similarly if the word “Salon” is registered by Salon service then no other Salon can use it.
If there is an objection regarding the trademark being non distinctive, the applicant can submit a reply to the ER stating that the Applicant’s mark can be distinguished from the goods and services it stands for OR the Applicant’s mark has acquired distinctiveness due to its extensive use relating to the goods it stands for by long time before the application was even made. If acquired distinctiveness is being claimed then an affidavit containing evidence of the extensive use of Applicant’s mark alongwith documents needs to be filed.
OBJECTION PERTAINING TO RELATIVE GROUNDS
There might be an objection based on the relative grounds of refusal under Section 11 of Trade Marks Act 1999. A trademark faces this objection during registration on the ground of same or similar trademark have been already registered or applied for before the registry of Trade Marks by some third party. The purpose of this grounds of refusal is to protect, rights of the party holding a similar or identical trademark and also to safeguard general public from confusion or deception as to the origin of the goods or services.
In case of objections as to relative grounds of the trademark, the applicant needs to decide carefully if he wants to state that his mark is different and so it has to be registered or if it is similar then an argument of a prior user of the mark can be put forward. In addition, the applicant can also produce consent or no objection from the proprietor of marks cited as conflicting in the examination report.
What is to be kept in mind while Replying to an Examination Report?
The response should not contain only single page blanket denials. The words “structurally, phonetically and visually different from the cited marks” can not be the core of most of the objections. Each objection should be dealt with separately.
FIND A SAMPLE EXAMINATION REPORT ISSUED BY THE CONTROLLER BELOW
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