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