Reply to TM Examination Report under Section 11
INTRODUCTION
Any word, logo, design, symbol, or combination of all of these can be registered as a Trademark in India. It helps to distinguish between the goods and services from the other competitors. The Trademarks are governed by Trademark Act, 1999 and the Trademark Rules, 2017.
Whenever a TM application is filed to the Trademark Department for Registration of Trademark, the department set up a scrutiny to examine the application and accordingly prepares the Examination Report. In the examination report the department can raise the objection in section 11 or section 9 or can ask to file TM-M for modifications to be filed. If not satisfied by the application submitted in form TM-A by the applicant. On the other hand, if the department get satisfied by the application it can further be processed as Accepted and Advertised.
HOW TO AVOID OBJECTIONS BEING RAISED IN EXAMINATION REPORT BY THE EXAMINER OF TRADEMARK:
In order to avoid objection in the examination report following points are to be kept in mind while filing application for trademark registration:
Carry out intense research of proposed mark on “Public Search” of trademark portal before applying for trademark registration.
Avoid words which are generic in use or offensive to any section of the society, because in such as cases there is high possibility that examiner may issue objections in the examination report.
Use unique words or coined words in the trademark to avoid duplicacy, and easy claim of trademark.
What happens when the Trademark gets objected?
When the trademark gets objected the applicant or the trademark expert who files the application on behalf of the applicant has to file the reply to the Examination Report which is issued by the department of trademark along with the relevant documents and proofs to justify why the mark should get register in the Trademark Registry
Basically, there are 2 categories of grounds on which the trademark can get objected.
Refusal under section 9
Refusal under section 11
However, in this article we will read about the objections which are raised under section 11 and the reply to file the against the Examination Report under section 11.
REFUSAL IN UNDER SECTION 11 OF THE ACT,
it is because of the similar / same trademark(s) is/are already on the record of the registrar for the same or similar goods or services.
As the mark is identical or similar to earlier marks or there is similar description of services.
Hence, the application shall be liable to be refused from getting registered by the registrar of trademarks. To justify that the proposed trademark is unique in nature, the applicant in response is liable to submit all the supporting documents within the 30 days from the issue of the Examination Report or can also apply for hearing.
You may note that if no reply or request for hearing is filed to the department, the registrar has the right to abandon the application.
TIME PERIOD FOR FILING REPLY TO EXAMINATION REPORT
Once examination report has been received by the applicant then he is required to file a suitable reply to such examination report in form MIS-R. It is to be noted that such reply is to be filed within a prescribed period of 30 days from the date of receipt of examination report. However, it is to be noted that if applicant fails to file the reply within the prescribed period of 30 days then he can ask for extension of time period for filing trademark examination report reply. For such extension period application is to be made in form TM-M.
FAQs ON TRADEMARK REGISTRATION IN INDIA
Is it mandatory to obtain Trademark registration in India?
Ans. No registration of trademark under Trademark Registration Act, 1999 is not mandatory. However, it is always recommended to register it on trademark portal as registration can provide multiple benefits such as protection against infringement of trademark. A suit can be instituted for the infringement of registered trademark which is not possible for unregistered trademark.
Is the registered trademark liable for removal on the ground of non-use?
Ans. Yes, a registered trademark can be removed from the trademark registry on ground of non-use. Except as excused in clause 3 of section 47 of trademarks act, 1999, a trademark may be removed on the ground of non-use if:
1. That the trademark was registered without any bona fide intention and was not used till date three months before the date of the application for removal; or
2. Trademark was not used for a continuous period of five years from the date of registration of trademark and application was made after three months from the expiry of five years.
I hope that you liked this write-up, if you still have any queries regarding Trademark Registration in India then you may connect to our team of experts at info@ccoffice.in or 9988424211.
