The trade mark status in the Indian Trade Mark Registry website shows as “Refused” when the Registrar/Examiner has refused a trade mark application after considering or hearing the applicant’s response to an examination report. The trade mark status could also show as “Refused” pursuant to a successful opposition by a third party against the registration of the trade mark. Effectively, the trade mark application is not in force.
Where a trade mark has been refused, Section 91 of the Trade Marks Act provides for an appeal to be filed with the Intellectual Property Appellate Board (IPAB) within 3 months.
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. Effectively, the trade mark application is not in force.
The trade mark application could be “Abandoned” due to lack of prosecution by the Applicant such as when:
1. No response has been filed to a deficiency letter within the stipulated period of one month from receipt of letter
2. No response has been filed to an examination report within the stipulated period of one month from receipt of examination report
3. Show-cause hearing has not been attended when the hearing was posted
4. Counter statement has not been filed with 2 months from receipt of notice of opposition
The trade mark status in the Indian Trade Mark Registry website shows as “Withdrawn” when the applicant has filed a request to withdraw the application voluntarily. In some cases, the applicant may have withdrawn the application when the Hearing Officer failed to accept the trademark. Effectively, the trade mark application is not in force.
The trade mark status in the Indian Trade Mark Registry website shows as “Registered” when the trade mark registration certificate has been issued by the Registrar. The applicant becomes the registered owner and is entitled to use the ® symbol next to its trade mark. The registered owner can take infringement action against the use of any deceptively similar trade marks. The online status in the Trade Mark Registry website sets out some important particulars such as the renewal due date.
It is to be noted that under the present Act, the registration is valid for 10 years from the date of application and should be renewed every 10 years before its expiry. The renewal application can be filed within 6 months before the expiry of trade mark. There is a grace period for a period of 6 months after expiry of trade mark during which the registration can be renewed by paying additional surcharge. If the trade mark registration is still not renewed during the 6 month grace period, the trade mark can be restored and renewed within 1 year after expiry by paying additional penalty.
If the 1 year grace period has also lapsed, then there is no possibility to restore or renew the trade mark under the Statute. Therefore, it is imperative that the renewal dates are properly docketed/diarized so that renewal fees can be filed at the appropriate time before expiry of trade mark.
In case the registration certificate is not available with the applicant, there is an option to apply for duplicate copy of registration certificate.
In case the trade mark registration is to be used for any legal proceedings, a certified copy should be obtained from the Trade Mark Registry.
After the advertisement of trade mark in the Trade Marks Journal, any third party may file an opposition to the registration of the trade mark within 4 months from the date of advertisement.
The trade mark status in the Indian Trade Mark Registry website shows as “Opposed” when such opposition has been filed by a third party (“opponent”). A third party usually files an opposition when there is a similar trademark published in the Journal or if the trade mark is alleged to be non-distinctive.
The trade mark status changes from “Advertised” to “Opposed” when a notice of opposition is filed by a third party. The notice of opposition is served on the applicant which sets out the grounds on which the opponent has based his opposition. It is imperative that a counter statement is filed by the applicant within 2 months from the date of receipt of notice of opposition, failing which it will be considered that the applicant is not interested in contesting the opposition. Accordingly, the trademark application will be abandoned if no such counter statement is received by the Registry within the stipulated period. It is important to note that no extension of time is granted for filing the counter statement.
Once the counter statement is filed by the applicant and served, the opponent is required to file the evidence in support of opposition within 2 months from the date of receipt of counter statement. The applicant is then required to file the evidence in support of application within 2 months from the date of receipt of evidence in support of opposition. The opponent then has an opportunity to file an evidence in reply. This ends the documentation stage in the opposition proceedings, after which the Registrar hears arguments from both parties or its agents before disposing off the matter.
Trade mark opposition is a lengthy process and it usually takes years for the Registrar to pass orders on the opposition.