In furtherance to the recent commotion caused by the Trade Marks Office abandoning more than 1,60,000 trademark applications overnight, the Office of the Controller General Patents, Designs and Trademarks has issued a Public Notice dated April 04, 2016 to apparently
Just as the image says, I would like to get to the point. But well..it is certainly not that easy! One of the most interesting debatable matters, atleast as far as India is concerned, is the validity of tag lines as trademarks.
As mentioned in my previous articles, the life of a trademark is ten years in India post which the mark requires to be renewed every ten years to keep the mark alive. Of course, the Trademark law requires the Trademark Office to notify the proprietor before the expiry of registration. Now the question that arises is :
The issue dates back to 2nd February, 2012 and 8th June, 2012 when the Controller General of Patents, Designs and Trademarks (CG) issued an Office Order No: 1 of 2012 and Office Order No:16 of 2012 respectively, that placed restrictions on amendments that can be made to a trademark application, more importantly the restriction in respect of amending the date of usage of the trademark in India.
One of the important statuses in respect of a trademark, shown in the website of the Trademark Office is “opposed,” for the registration of the said mark becomes dependent on the outcome of the said opposition. The term “opposed” means that a third party, has found the mark objectionable primarily in light of Section 9 or 11 or both (and any other provisions of the Trademarks Act), intimates the same in writing to the Trademark Office and requests for its refusal. Section 21 of the Trademarks Act 1999 clearly elucidates about opposition. Simply put, a mark predominantly gets opposed either owing to its similarity with an existing mark or due to alleged non-distinctiveness or both.
After a trademark application sails through the journey of examination, advertisement and opposition, it reaches the final and happy stage of registration. When the online status of a mark shows registered, it means, as the term suggests, the mark has obtained registration and the applicant becomes the legal owner/registrant of the said mark. A registration certificate mentioning the details of the trademark (including date of registration, registration number, Journal in which it was published) is also issued to the applicant. The details of the said trademark are entered in the Register of Trademarks maintained by the Trademark Office.
The term ‘marked for exam’ implies that a trademark application has been taken up for examination or is due to be examined shortly by the Trademark Office. The term “examination” per se means that the particular trademark would be examined to see if it satisfies and overcomes the objections enunciated in the Indian Trade Marks Act, 1999( what we call “absolute and relative grounds” under Section 9 and 11), only after which it proceeds to advertisement and ultimately registration.
This is a very simple and preliminary stage wherein the Trademark Office asserts that all the formalities required to be observed while filing a trademark application have successfully been observed by the applicant and the application would soon proceed to the next level. The formalities here might imply submission of appropriate information or documents like Power of Attorney. If the status shows “formality check fail,” it naturally implies that there is some deficiency in observing the formalities, in which case, it is better to check with the Trademark Office as soon as possible to determine what is required, to fulfill the deficiency and proceed to the next level. There is no prescribed time frame in any of the above scenario. Where the status is “formality check pass,” one has to await the natural progress to the next stage which, currently, is seldom delayed.
We have been providing regular updates on the efforts taken by the Controller General of Patents, Designs and Trademarks (CGPDTM) to achieve complete automation and more significant, absolute transparency(some of our articles on this could be found here and here). In yet another move towards transparency, the CGPDTM has now introduced “Stock and Flow based Dynamic Trademark Utility.”
We are a boutique intellectual property law firm based out of India, assisting clients ranging from early-stage start-ups to Fortune 500 companies across several industries in protecting intellectual property across the globe.