WHEN IS AN EXAMINATION REPORT ISSUED BY THE TMR?

Once a new trademark application is filed, it goes through formality checks such as whether supporting documents, power of attorney, adequate fees, user affidavit etc. have been filed. Thereafter, it is thoroughly examined by the Registrar and an examination report is prepared, which is communicated to the applicant. The applicant is required to file a response to the examination report, responding to the objections raised by the Examiner, within 30 days from the date of receipt of the examination report. The applicant can file documents in support of his written submissions in the examination report.

OBJECTIONS RAISED ON ABSOLUTE GROUNDS OF REFUSAL.

 The Registrar usually  disentitles a mark which is devoid of any distinctive character, i.e., which is not capable of distinguishing goods or services of one trader from those of another, who are in the same trade. Trade marks are inherently distinctive if they are arbitrary (the name is not related to goods/services), fanciful (the name is completely made up) or suggestive (the name suggests a feature of goods/services).

 Any mark which mentions or describes, the kind, quality, quantity, intended purpose or other characteristics of the goods or service is objected on grounds of absolute refusal. For example, a trademark such as ‘ALMONDS’ cannot be applied for goods such as nuts or dry fruits.

The only way to overcome objection of a non-distinctive mark, is by showing that the mark has acquired distinctiveness or is recognized as a well-known trade mark on or before the date on which the mark was applied for registration. We are required to show, long, extensive, continuous and uninterrupted use in order to claim distinctiveness by way of use. For example, the trademark ‘Coca Cola’ though selling cola as goods under the mark, has acquired distinctiveness and is well known throughout the world.

All applications for registration of product packaging and trade dress as trade marks, are also required to prove inherent distinctiveness. Color, sound, and other non-traditional trade marks require proving of acquired distinctiveness.

Other absolute grounds of refusal are trademarks which creates confusion, such as if some one has applied for registration of the trademark APPLE but is actually selling oranges. The word ‘Apple’ here cannot be considered an arbitrary mark, as a particular fruit is being sold in the name of another fruit; which is actually very confusing.

However, we must keep in mind that if a marks comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or contains scandalous or obscene matter; or its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950, even with a claim of acquired distinctiveness, such objections cannot be overcome.

 

OBJECTIONS RAISED UNDER RELATIVE GROUNDS OF REFUSAL.

A relative ground of refusal is usually issued by the Registrar where there are similar or identical marks with similar goods description, already existing in the records of the TMR. The prior applied or registered marks in the eyes of law have better rights than a new application.

Below are some of the ways by which one can overcome a relative ground of refusal:

a.     if the marks are different when viewed as whole, we state the differences to overcome the objection;

b.     if the goods are not overlapping in the same class, we usually state that the goods of the applicant’s marks are different from the goods of the cited marks;

c.     if we are able to prove by way of evidence, that the applicant’s mark has been in use prior to the date of application of the cited mark in the examination report. In such a case, prior to use a mark, supersedes the rights of prior registration.

CONCLUSION

The Registrar holds the power to refuse a mark, if response to examination report is not filed within the stipulated time period of 30 days. The period of 30 days to respond may by extended by a month on prior request, at the discretion of the Registrar. If the written response to examination report is not satisfactory, the Registrar usually appoints oral hearings, granting further opportunity to the applicant to present their case and orally make further submissions. Thereafter, an order of acceptance or refusal is passed by the Registrar.