The Examination of a Trademark is one of the essential tests in the entire process of Trademark Registration. The Examiner, who is in charge of examination, starts perusing the digitalised application and related documents to verify whether they are authentic and valid according to the Trademark act as well as Trademark Rules, 2017.

While making the report of Examination, the Examiner is authorised to examine the application and raise objections on the following grounds:

  1. Refuse to register on relative grounds and/or absolute grounds with appropriate grounds or,
  2. Accept the application for registration with or without any stipulated condition.

The stage of examination is not as simple as it seems. The Examiner has to rigorously examine the application with 16 individual steps, which takes up to 2-4 months.

What are these various steps under the test of Examination?

  • Identification of Nature of Application: To begin with, the examiner shall determine the nature of the registration application based on the type of form submitted.[1] For instance, an application to register a collective mark has to be filed through Form TM-3. On the other hand, the same collective mark when registered with ‘priority claim[2] has to be filed through Form TM-64. Similarly, every application for registration should be filed according to its nature in the prescribed Form.
  • Ensuring the appropriate name of the Applicant: The Examiner must ensure that the applicant who is also claimed to be the owner of that mark shall mention their identity as per Section 18 of the Act.[3] In simple words, besides the name, the identity comprises whether the entity is an individual, a company, a society, a trust, a government entity, a public sector undertaking, a partnership firm, or joint applicants such as two or more individuals.
  • Ensuring the submission of the Power of Attorney: A Power of Attorney shall be duly executed through Form TM-48 if the application for registration is not filed by the applicant; instead, it is filed by a representative. The form shall be signed by the individual who is claiming to be the applicant’s representative or agent. This individual can be a practising lawyer, a registered trademark agent, or a constituted attorney.[4]
  • Ensuring about the applicant’s principal place of business: This step ensures that the principal place of business shall be duly mentioned by the applicant. If there is no specific principal place, then the applicant’s address for service in India should be specified, and the same shall be acknowledged by the examiner.[5]
  • Ensuring transliteration and translation of trademarks in non-English or non-Hindi characters: When the mark consists of any word or group of words in any language which is neither Hindi nor English, then an accurate transliteration and translation in English or Hindi shall be provided by the applicant or their agent.[6]
  • Ensuring the consent of a person or his legal representative, if the trademark contains a name or representation of that person: The mentioned legal representative shall officially consent in written form and verify that he will be solely responsible for the trademark after the demise of the owner.[7]
  • Ensuring submission of draft regulations in case of an application for registration of a collective mark: In case the application demands for registration of a collective mark, the applicant needs to submit form TM-49 containing draft regulation. A collective mark belongs to a group of members rather than any one individual. It identifies a commercial relationship with the association or organisation that owns the mark. Thus, a draft regulation as directed under Section 63 of the Act shall be filed to manage the use of that collective mark.[8] This must include details like the name of the association, members, objective, conditions to govern the mark with required sanctions and procedure for dealing with appeals against the registered mark.[9]
  • Ensuring submission of draft regulations in case of an application for registration of a certification mark: Along with the application, the examiner shall verify that a draft regulation on form TM-49 shall also be submitted, which is equivalent to an owner’s competence certificate. The primary purpose of a certification trademark is to ensure that the proprietor and their goods or services are eligible, authentic and competent. Thus, a draft regulation under Section 74 of the Act shall be filed.[10] This should include necessary information of the applicant, nature of the applicant’s goods and services, infrastructural details, applicant’s competence according to the stipulated certification scheme, financial assets, an undertaking to ensure no discrimination and other relevant information as may deem fit by the Registrar.[11]
  • Ensuring submission of adequate priority documents in case of applications with priority claims: When a priority claim is made to register the trademark in a conventional country, i.e., in a country that ratified the Paris Convention for Protection of Industrial Property similar to India. Hence, the Examiner shall verify the documents for priority claim along with the application.[12]Firstly, the application for registration in a conventional country, the proprietor shall file the same within six months after the date of a simple application.
  • Examination of application as to the classification of goods and services: The Examiner must check that the application for trademark registration has been filed correctly with proper classification and specification for that particular kind of goods and/or services. The goods and/or services are categorised for trademark registration; hence they shall be in line with the current version of the WIPO’s International Classification of Goods and Services or NICE Classification.[13]
  • Examination of application as to relative grounds for refusal of registration: The Examiner shall conduct a Search through the Trade Marks System, especially for those trademarks that are ‘same or similar‘ in terms of descriptions of goods and/or services. Thus, the Examiner is authorised to reject the application on relative grounds. Following are some important types of search:
  1. Word Mark search: Here, the examiner conducts a search of prior registered marks by selecting characters as prefixes or suffixes.
  2. Phonetic search: Here, the Examiner can identify and mention one or two phonetic elements to find phonetic similarity.
  3. Device Mark search: Here, the Trade Marks System is used by the Examiner to find prior trademarks consisting of the same or similar features.
  • Examination of application as to absolute grounds for refusal of the application for registration: The Examiner shall scrutinise the application to know whether the goods and/or services are distinguished from others or not. The lack of distinctiveness can lead to refusal of registration under Section 9 of the Trade Marks Act 1999. The meaning of “devoid of distinctiveness” has a very wide meaning. Following are some designations or characteristics which are examined and cannot be the mark itself:
  1. Kind or Size of the product
  2. Quality of the product
  3. Quantity
  4. Intended purpose or sole use of the goods/service, es
  5. Value or merit of the product
  6. Geographical origin
  • Draft for communication of objections to the acceptance of the application for registration, which is liable to be refused on absolute grounds: The Examiner shall communicate the objections as prescribed under Section 9 of the Act, i.e., refusal on the grounds of absolute grounds of lack of distinctiveness.[14]
  • Examination of series marks: When the proprietor wants to register a series of trademarks, then a single application is filed under Section 15 of the Act. Series marks are a group of marks that are similar in material particulars and thus applied for registration as series in one single registration.
  • Proposing appropriate condition of acceptance of the application or limitation of use of the trademark: The Examiner shall suggest some conditions or apply restrictions before proceeding to the advertisement stage.[15] The applicant must accept such a proposal within one month of such objection; otherwise, the examiner may abandon the entire application. These conditions include variation in name and description of the marks[16], conditions against the medium of use, etc.
  • Communication of Examination report to the applicant: The Examiner shall prepare their examination report containing a summarised version with the most crucial elements such as:
  1. Objections against the general missing formalities or mistakes in the application,
  2. Objections under Sections 9 and 11 and other relevant Sections of the Trademarks Act and Rules,
  3. Suggestions for conditions or limitations on the utilisation of the mark.

This compiled report shall be submitted to the Supervising Examiner, who has the authority to either approve it or return it for re-examination. The approved ones are available on the official website www.ipindia.nic.in with the status of the application. Finally, the report is sent to the proprietor and their legal representative.

Conclusion: Besides the time limitations which are specified for proprietors, there is still an ambiguity in deciding a fixed period by the Trademark Office for an application to get completely tested and examined. The Examiner prepares the report after a comprehensive examination of the trademark application in accordance with the Trademarks guidelines, Rules and the Act. It is generally believed that only absolute or relative grounds under Section 9 and 11, respectively, are the sole reasons behind the refusal of registration of Trademark. Still, the proprietor and its agent should know such an extensive examination test.

References: 

  1. [1] Schedule I to the Trademarks Rules 2017.
  2. [2] Section 154 of the Trademarks Act, 1999.
  3. [3] Section 18 of the Trademarks Act, 1999.
  4. [4] Section 145 Rule 21.
  5. [5] Rule 18 under the Trademarks Rules, 2017.
  6. [6] Rule 28 under the Trademarks Rules, 2017.
  7. [7] Section 14 and Rule 29.
  8. [8] Section 63 of the Trademarks Act, 1999.
  9. [9] Rule 131 under the Trademarks Rules, 2017.
  10. [10] Section 63 of the Trademarks Act, 1999.
  11. [11] Rule 137 under the Trademarks Rules, 2017.
  12. [12] Section 154 (1) of the Trademarks Act, 1999
  13. [13] Section 7 and Rule 20.
  14. [14] Rule 33
  15. [15] Section 18(4) of the Trade Marks Act 1999.
  16. [16] Rule 30

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Author

  • Title

    Shubhangi Gehlot is a 4th Year Law student from the Faculty of Law, Maharaja Sayajirao University of Baroda. She is ardent about legal research and writing. Intellectual Property Rights with an amalgamation of Media and Entertainment Law, Cyber and Technology Law and Human Rights are a few of her many key interest areas