WHAT DOES MEAN BY THE STATUS GIVEN UNDER TRADEMARK REGISTRATION PROCESS

STATUS UNDER THE PROCESS OF REGISTRATION OF TRADEMARK

A trademark application goes through various stages of scrutiny before it is registered. The various stages are briefly explained below. After filing of trademark any objections or notifications will be shown online.

Status “New Application”

The trademark application has been entered into the trademark application data base.

Status “Send to Vienna codification”

When the trademark comprises figurative elements/logo and is being assigned a Vienna Code by the Indian Trade Mark Registry. As soon as a new trade mark application is filed, a Vienna Code is assigned if the trade mark comprises figurative elements/logo. The Vienna code is assigned based on the nature of the figurative element/logo. Such figurative elements/logos are codified according to the Vienna Agreement as per the link below:

 

http://www.wipo.int/classifications/nivilo/vienna/index.htm#

Vienna codification is done by the Registry so that trademark searches can be conducted for artworks/logos. Once the Vienna codification is done, there is still a long way in the trade mark registration process such as formalities check, examination, publication and then registration.

Status “Formalities Check Pass”

The trade mark status in the Indian Trade Mark Registry website shows as “Formalities Check Pass” when the preliminary documentary requirements are met. The Trade Mark Registry usually checks if the basic requirements are met such as: whether the POA has been uploaded (when filed through an agent) and whether appropriate translation/transliteration (if applicable) has been filed.

Status “Formalities Check Fail”

When such basic requirements are not met, the status could be reflected as "Formalities Check Fail". 

Status “Marked for Exam”

The trademark application has been taken up by the examiner to check for acceptability.

Status “Objected”

When the Registrar/Examiner has raised one or more objections in the Examination report under Sections 9 and 11 of the Trade Marks Act.

Section 9 objections are made when the Registrar/Examiner considers the trade mark to be descriptive of goods/generic/laudatory/indicating quality or nature of goods.

Section 11 objections are made by the Registrar/Examiner when there is an identical/similar trade mark in respect of identical/similar goods/services already on record in the Trade Mark Registry. In such cases, the Registrar/Examiner issues a computer generated Search Report with the list of conflicting marks. 

Status “Abandoned”

The trade mark status in the Indian Trade Mark Registry website shows as “Abandoned” when the applicant failed to respond within the stipulated time period prescribed under the Act.

The trade mark application could be “Abandoned” due to lack of prosecution by the Applicant such as when:

• No response has been filed to a deficiency letter within the stipulated period of one month from receipt of letter
• No response has been filed to an examination report within the stipulated period of one month from receipt of examination report
• Show-cause hearing has not been attended when the hearing was posted
• Counter statement has not been filed with 2 months from receipt of notice of opposition

Status “Exam report issued”

The trademark application will probably published in trademark journal or requires slight modification to be published.

Status “Refused”

The trademark registration has been refused based on the applicant’s response for the adverse report or objection.

Status “Advertised before acceptance”

When the trade mark application has been advertised before acceptance in the Trade Mark Journal by the Registrar (factors taken into consideration by the registrar for advertising the application in the trade mark journal)

Status “Accepted & Advertised

When the trade mark application has been accepted and advertised in the Trade Mark Journal. This is one of the final stages in the trade mark registration process.

The statute allows for any third parties to oppose the trade mark application within 4 months from the date of advertisement in the Trade Marks Journal. Where an application is advertised before Acceptance and there is no opposition lodged during the opposition period, there is a procedural requirement for the application to be accepted by an Accepting Officer before the registration certificate is issued. Once accepted by the Accepting Officer, the trade mark status changes to “Accepted and Advertised” and then “Registered”. The registration certificate is usually issued in approximately 3 months upon expiry of opposition period.

Status “opposed”

The trademark application has been opposed by third party. It must resolve the oppositions’ concern through the registrar.

Status “Withdrawn”

The trademark application has been withdrawn by applicant prior to registration.

Status “Removed”

The trademark application has been removed by the trademark registry. The mark is no longer trademarked.

Status “Registered”

The trademark application has been accepted and registered.










Written By 
CS Diwakar Agrawal

TRADEMARK RULES 2017

TRADEMARK FEES, FORMS & OTHER CHANGES

The new Trademark Rules 2017 came into force. With this, the earlier 2002 rules underwent a major overhaul. The primary purpose behind this change is to simplify the Trademark registration process.

Another motive for this change is improving the ease of doing business in India. Special provisions for startups, individuals, and small scale industries bear witness to this fact.

In line with the PM’s Digital India initiative, the new rules promote E-filing by way of a 10 percent discount on filing fee. But, the new rules have their pros and cons. Moreover, the Trademark Rules 2017 hold different things in store for different entities.

So, below is an analysis of all the changes in these rules along with their perks as well as flaws

Trademark Rules 2017: All That Has Changed

1. Changes in trademark application forms

The previous rules provided for a humongous number of 74 forms, one for each type of application. The Trademark Rules 2017 bring this number down to a paltry 8. The following table provides an insight into the use of each form.

Form	Purpose
TM-A	Applying for Registration
TM-C	Obtaining Search Certificate for Copyright Registration of an Artistic Work
TM-G	Applying for Registration/Continuation/Restoration/Alteration in Details of a Trademark Agent
TM-M	Requesting Inclusion of a Mark in the List of Well-Known Trademarks/Applying for Amendment in Trademark Application/Seeking Registrar Preliminary Advice or Grounds of Decision/Applying  for Regulation of Certification Trademark or Deposition of Regulation of Collective Trademark/Requesting Review of Registrar’s Decision/Certified Copy/Duplicate Registration Certificate/Extension of Time/Inspection of Documents/Particulars of Advertisement/Registrar’s Order in a Contesting Proceeding/Any Other Miscellaneous Matter not covered by other Forms
TM-O	Filing Notice of Opposition with the Registrar of Trademarks/Applying for Rectification of Register or Invalidation of a Trademark or a Related Counter-Statement
TM-P	Requesting Replacement of Subsequent Proprietor as Registered Proprietor/Amendment to details of Registered Proprietor or Registered User/Amendment of Registered Trademark or Specification of Goods or Services/Conversion of Goods/Dissolution of Association between Trademarks
TM-R	Requesting Renewal/Renewal with Surcharge/Restoration of a Trademark
TM-U	Applying for Recordal/Cancelation/Variation/Amendment in Details of Registered User or Intervention in Proceedings by Third Party

It is clear that reducing the number of Forms is a laudatory step. This is because it makes the entire process much more simple and hassle free.

Instead of remembering and filling a different form for each process, now it is easier to file an application for all the different applications related to Trademarks or Copyright.

The naming of Forms according to the type of application makes the entire process even simpler. For instance, TM-R stands for Renewal or Restoration application. TM-C stands for Copyright Search Certificate. TM-U stands for Registered User Applications and so on.

2. Registration of a trademark

With a single form to apply for all kinds of Trademark Registration applications, the process is easier than before. Significant changes are the reduction in the number of forms and increase in fee.

Let’s understand this with the help of an example. P is an individual who needs to file a Trademark Registration application for his/her business logo. Earlier, filing an application for registration would mean submitting a number of forms.

TM-1 was filed for a regular application. Power of Attorney authorizing an agent to file the application was filed in form TM-48. There were as many as 18 Forms for filing different kinds of applications. For example, TM 64 for collective marks and TM 4 for certification Trademarks.

The Trademark Rules 2017 do away with the complex procedure, providing a single form TM-A for all kinds of applications. Now all you have to do is fill a single form, instead of trying to find out which form to fill for a registration application.

3. Well-known trademarks

This is a significant change from the earlier rules. Earlier, the judiciary had the power to decide if a mark is well-known or not.

Moreover, such a situation would arise only in cases of infringement. But, now an applicant can request the Registrar to determine whether a Trademark is well-known or not by filing Form-M along with the fee of Rs. 1,00,000.

This step seems to be arbitrary and may work differently for different parties. It gives virtually unbounded power to the Registrar. It also promotes exercise of unfettered discretion.

The judiciary exercises utmost caution in determining the status of a mark. But, the Registrar may not do so. It may prove to work to the advantage of influential parties and to the disadvantage of others.

4. Increase in fee

With the coming into force of the Trademark Rules 2017, Government fee for almost all kind of applications has almost doubled. In some cases, the rise is even more than 200 percent.

For instance, earlier the application fee for each class was Rs. 4000. Now, the government fee for the same is Rs. 10,000 (9,000 if the party opts for E-filing).

Earlier, the fee for registering a subsequent proprietor used to start from Rs. 5,000. Now, the fee is Rs. 10, 000. Another example is the application for Search Certificate for Copyright Registration. The new rules hike the former fee of Rs. 5,000 to Rs. 10,000.

The intent behind such a steep hike in the applicable fee might be to prevent filing of frivolous applications. However, raising the fee as much as 200 percent (more, in some cases) is hard to justify.

The former fee of Rs. 5,000 for Copyright Search Certificate was pretty high in itself. It brought the Government fee for Copyright Registration of Artistic Work (for commercial use) to Rs. 7,000. Now, a 200 percent increase will make it go further up to Rs. 12,000.

This means trouble for small businesses or individuals proprietors. They can hardly afford to shell out an amount this high to get a Copyright Registration for their business logo or other artistic work.

5. Concession to small businesses, startups and individuals

The huge jump in the government fee means shelling out more fee. But, the new rules provide much-needed relief to entities in need of concession.

There is only an increase of Rs. 1,000 for individuals, startups and small enterprises. This means that the Government fee for these parties is Rs. 5,000 instead of RS. 10,000. A further discount of 10 percent on E-filing reduces the fee even more.With an E-filing fee of Rs. 4,500 there is not much increase in the earlier fee.

This is good news for these parties and also a considerate step. The government’s motto of promoting small business as well as entrepreneurs will receive a definite boost with this concessional fee.

6.  Promoting e-filing

This rule is in complete sync with the Digital India Drive. The fee schedule specifies a 10 percent discount for E-filing of every kind of application.

Moreover, for some applications, the new rules don’t allow physical filing at all. For instance, the application for expedited issue of Copyright Search Certificate can only be made online. Same is the case with expedited processing of an application for Trademark Registration. Online filing is also compulsory for determining a well-known Trademark. For certification or transmission of an international application too, you need to apply online.

This is another welcome step. Reducing unnecessary paperwork will achieve at least two results. First, it will enable faster processing of application. This will reduce processing time to a great extent. Second, less or minimal paperwork will improve the efficiency as well as productivity of the Government Office.

7. Compulsory filing of user statement or affidavit

Earlier, the Registrar exercised discretion when it came to User Statements in respect of marks claiming prior use. The applicant only needed to specify two details. First, the date since the mark was being used. Second, the person using it. Registrar could ask such person for an affidavit to this effect.

Now, there is no more room for Registrar’s discretion in this matter. If the user is claiming use of the mark before the date of application, filing an affidavit is compulsory.

Compulsory filing of one more document may be inconvenient for the applicant. But it is too early to comment on any other adverse impact that it may have.

8. Registration of sound marks

The Trademark Act consists of provisions concerning Sound Marks. However, the 2002 rules did not mention them. The Trademark Rules 2017 contain specific mention of these marks. Rule 26 (5) specifies the format for submitting a sound mark for registration.

Insertion of this rule is a welcome step as it gives some clarity on the mode of submission of a Sound Mark.

Conclusion

Trademark Registration in India has undergone a major change. The new Trademark Rules 2017 make the entire process much easier with a number of new Rules. So, the final verdict on the Trademark Rules 2017 leans more in their favour than against them. Steps such as discount on E-filing, only a minor increase in fee for applicants who need it, and making the entire process of registration simpler definitely deserve praise. Some changes do remain questionable. For example, the whopping increase in fee and the discretion granted to the Registrar in a case of well-known Trademarks.

However, as of now, the overall changes which the Trademark Rules 2017 bring seem to be positive. Some amendments in the future may correct the not-so-great and dubious parts of these rules.

One major change is the compulsory User Statement or Affidavit which is explained in more detail below.

As an individual, you don’t have to pay the fee of Rs. 10,000. You can obtain Trademark Registration for Rs. 5,000 (Rs. 4,500 for E-filing). So, the fee remains more or less the same as earlier.

Other requirements of filing representations of Trademark remain the same.

Not changing the primary requirements is a wise step. A complete revamp of the existing system would have caused a lot of confusion and chaos.

Written By:

CS DIWAKAR AGRAWAL

MOB: +91-9911746549