The trademark registration process, which we have covered in an earlier post is fairly straightforward. A trademark application is filed, examined by the Trademark office, either refused or allowed subject to a hearing, advertised and registered if it is not opposed. In this post, I’ve decided to cover the examination process and in particular responding to an examination report.

There are approximately 17 to 24 examiners (as per the information received in response to our RTI Application a year ago) who go through roughly 200,000 trademark applications each year. While that is a lot of applications to go through, they have certain guidelines to go by; the first of course is the Trademarks Act 1999 and there is a Draft Trademark Manual issued by the Trademark Registry.

The objections

When a trademark application is received by an examiner, He or she has to verify if the application can be allowed to be registered. In general, examiners would look into the following aspects

Information and Format – They will check if the application has been filed in the correct form, if all the relevant details are included and if the specification of goods/services mentioned fall under the appropriate class and are clear enough.

Absolute Grounds – The next aspect examiners look into, is to see if the trademark is distinct and if it does not describe the goods. A trademark if granted gives the owner an exclusive right to use the mark, so they have to make sure that it doesn’t indicate the goods, and that it is not common to the trade (If a baker got the trademark “bakery” or “baker” registered, no other baker would be able to operate)

Relative Grounds – The examiners look into whether there are any identical or similar trademarks in the class that the mark has been applied for or any related classes.

Conditions – Finally the examiners have to decide whether or not to impose any restrictions or conditions on the trademark. This can be imposing a disclaimer so that a descriptive or common word is not granted exclusive protection to the owner.

Responses

If the examiner has any or all of the objections mentioned above, he or she compiles them into a comprehensive examination report which is uploaded on website of the trademark registry. The trademark applicant or the attorney of the applicant has to file a response to the objections raised in the examination report. While there is no fixed format or requirement to be complied with there are certain factors that you need to keep in mind when drafting and filing a reply

Be Comprehensive:

An objection in most cases would be either on absolute or relative grounds of refusal and both of which are objections under the law and so it would be necessary to respond citing judicial precedent. State your arguments for why you believe the trademark should be registered and substantiate them with evidence and the law. Several owners and attorneys used to and some continue to file a basic response merely denying the objections (The trademark applied for is distinct and it is structurally, phonetically and visually different from the cited marks – That’s it! These were the crux of several replies!) The situation got so bad, that the Controller had to issue a public notification stating that they wouldn’t accept single page blanket denials (A copy of the notification can be found here)

Be Consistent:

As with anything you put down in writing, be aware of what you write in your response as you never know when it will come back to haunt you or legally stop you taking an opposing stance. If your trademark has been objected to stating that there are similar trademarks already on the register you need to decide carefully if you want to state that your mark is different and so it has to be registered or if it is similar and you are the prior users of the mark. Many times in the quest of just submitting a response to comply with the deadline, it is common practice to simply dismiss the objection stating that the mark is different. What happens though if you want to stop the person later since their mark is similar to yours and take them to Court. It could be held against you stating that you already responded in the reply that the marks are different.

This happened recently in the India Today case when India Today was not able to stop Punjab Today among other reasons because they had already stated in their reply to the examination report that they felt the mark was “visually, structurally and phonetically different” from Punjab Today.

Another recent case where Collector’s Choice was held to be similar to Officer’s Choice, the Plaintiff, when discussing the similarity of the marks referred to the reply to the examination report of the Defendant where they had argued against lack of distinctiveness by stating that the Registry had allowed marks like Officer’s Choice and so theirs had to be as well.

So if and when you find yourself as a trademark owner reviewing your lawyer’s submission or as a lawyer preparing one, remember to look ahead and think before you reply! It’s not just enough that you get your trademark registered it’s how you do it!

This article has been authored by Navarre Roy, an IP Law practitioner.

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