Once the data entry of an application for registration of a trademark is made and digitization of the trademark application and other connected documents, if any, is complete, the application is allotted to the examiner for examination of application under the provisions of the Trademarks Act and Rules. The word “Examiner” includes any officer assigned with the duty of examination of applications.
The allotment of applications to existing examiners for the purpose of examination is done automatically through the Trade Mark System and strictly in order of the date and time of submission of the applications. The Examiner usually gets a lot of 20 applications in his account and scrutinizes the application as to-
- Whether the application has been filed in the manner as prescribed in the Trademarks Rules.
- Whether the trademark applied for registration can be refused on relative or absolute grounds under the Trade Marks Act, 1999. If yes, the reasons for the same.
- Whether any restriction, condition or limitation is required to be imposed, in case the application is accepted for registration.
The Examiner thoroughly examines the application and makes a search for earlier trademarks which are identical with or similar to the mark being examined and he then prepares a consolidated examination report, as far as applicable, for:
- All the objections relating to formality requirements as to filing of application
- Objections to acceptance of the application for registration of the trademark
- Proposals for conditions of acceptance or limitation to use of the trademark, in case the application is accepted for registration
Reasons for Objection
- In case the application is not on proper form
The examiner examines the application as per the nature of the application submitted irrespective of the form number mentioned and requires the applicant to correct the form of application by filing a request. If the form is not correct, the examiner raises an objection so that the applicant can use the correct form.
- In case the name of the applicant is not appropriately mentioned
The examiner ensures that the name of the applicant claiming to be proprietor of the trademark is properly mentioned in the application or not. If not, he raises an objection for the same.
- In case no proper Power of Attorney is submitted
The examiner ensures that duly stamped 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, the examiner communicates his objection asking for a duly stamped one.
- In case the Principal Place of business is not mentioned
The examiner ensures that the applicant’s principal place of business and the address for service of the applicant is properly mentioned in the application. Every application for registration of a trademark is required to have the principal place of business of the applicant. The examiner has to communicate the objection if the principal place of business is not mentioned or if the applicant has no principal place of business in India.
- In case the trademark is not in Hindi or English language
If the trademark applied for registration is in a language other than Hindi or English, the examiner ensures that a transliteration is properly mentioned in the application. A sufficient transliteration into roman script and its translation of such word in English is endorsed on the application form and the additional representations thereof, and every such endorsement states the language to which the word belongs and is signed by the applicant or his agent. If it is not in the above mentioned languages, the examiner defers the application and communicates it as deficiency to the applicant concerned.
- In case of representation, the consent of the person or his legal representative is missing
If the trademark applied for registration contains a name or representation of a person, the examiner ensures that the consent of the person or his legal representative is submitted with the application. If the consent of the person or his legal representative is absent, the examiner raises an objection for the same.
- In case specification of goods or services is not clear
The examiner ensures that the application for registration of a trademark has been filed with proper specification of goods and/ or services and with proper classification of the same as well. An application for registration of a trademark is filed only in respect of specific goods or services; therefore the application is required to have an exact specification in respect of which the registration is sought. In case the specification of goods or services mentioned in the application is too wide or vague, the examiner raises an objection to this effect.
- In case of refusal of registration on relative grounds
The examiner makes a search of same or similar 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 raises an objection to acceptance of the application for registration on relative grounds.
- In case of refusal of registration on absolute grounds
The examiner examines 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 under section 9 of the Trade Marks Act. If the application is liable to be refused on absolute grounds, the examiner communicates the objection for the acceptance of the same.
These were some top reasons for trademark objection by the examiner. After assessing the application thoroughly, the examiner prepares a consolidated examination report which is further sent to the supervising examiner who, either approves the report or send it back for re-examination. All the examination reports approved by the supervising examiner are released on the date of the approval and are made available on the official website with status of the relevant application. The report is also sent to the applicant or his authorised agent on his email.
Source: A draft of Manual of Trade Marks, Practice and Procedure.
