Deadline to respond to objections:

The deadline to respond to the objections raised by the Indian Trademark Office is one month from the date of receipt of the provisional refusal notification by the Applicant. Accordingly, the date to calculate the deadline will be from the date when you actually receive the provisional refusal notification from the International Bureau of WIPO and not from the date it is issued by the Indian trademark office or the International Bureau of WIPO.

Proof of receipt of the Provisional Refusal:

If the provisional refusal is delivered though post, the date of receipt of the provisional refusal from WIPO needs to be evidenced by documentary proof such as the postal receipt specially to prove that the response is filed within the deadline of 30 days from the receipt of the provisional refusal. Hence in matters where you receive the notifications from the International Bureau of WIPO by paper it is advisable to retain the postal receipt.

In cases where the provisional refusal is notified through email, the one-month deadline shall be calculated from the date of receipt of the said email correspondence.

Extension of time:

While the deadline to file a reply to a provisional refusal is one month from the date of receipt, it is possible to extend this deadline by filing an appropriate application prior to the expiry of the deadline. While there is no specific provision in the statue to this regard, but the Guidelines for Functioning under the Madrid Protocol issued by the Indian Trade Marks Registry states that if no response is filed or in case no extension request is filed, the provisional refusal shall be confirmed. Accordingly, not more than 1 extension is recommended as granting of extension is at the discretion of the Registrar.

Importance of claiming use of the mark in India:

Unfortunately, there is no provision for applicants to either state when the mark was used in India or if they want to file on a “proposed to be used” basis at the time of filing the Madrid Application designating India. This despite the fact that India has reserved the right to require a specific declaration of intention to use as per Rule 7 (2) of the Common Regulations.

Being a common law country, protection of trademark rights in India is based on prior use as opposed to protecting rights of the person first to file. Claiming usage for your trademark applications plays an important role in terms of arguing acquired distinctiveness and, proving prior adoption or use in oppositions or any action against third party infringers. The Indian Courts hold a very broad view of the term ‘usage of a mark in India;’ and have gone to great lengths to broaden its scope in order to protect the legitimate interests of the genuine trademark owners. Users from India accessing the website where the trademark is available, trans-border reputation and even mere presence of advertisements containing the trademarks in International publications circulated in India amounts to usage of the trademark in India.

Filing a detailed response:

As a general practice under trademark prosecutions in India, post filing a response to the objections, if the Examiner is not satisfied with the response and/or the response does not sufficiently provide the requisite information, a hearing is appointed, which in turn prolongs the prosecution procedure and increases prosecution costs to the applicant. However, for Madrid applications, the Registry has so far been relying solely on the response filed without appointing subsequent hearings which saves time and costs for the applicant.

Therefore, it is of utmost importance that a detailed response to the provisional refusal be filed, contesting and arguing on all the objections raised, corroborating arguments with relevant judicial precedents and providing sufficient evidences corroborating the claims.

As discussed above, although there is no provision for claiming usage for a Madrid application in India, however, given the importance accorded to usage of a mark in India, one must ensure that any such usage claims, along with documentary evidences are provided in the detailed response to the provisional refusal. This way, the bona fide usage of the mark will be taken into consideration, despite the fact that usage wasn’t claimed while filing the application.

Making any amendments/renewing the Madrid Application:
All desired amendments from amending the goods/services, filing an assignment request, name/address change request and so on, to filing a renewal application in respect of the Madrid application designating India needs to be made only at the International Bureau of WIPO and the shall be notified to the Indian Trademark Office by WIPO.

Conclusion
Considering the humongous amount of backlog of trademark applications, the pace at which the Indian Trade Marks Registry has been examining and issuing the provisional refusal for Madrid Applications off late is much commendable. From my personal experience, the number of provisional refusal enquiries received by our firm in the last few months have doubled, which in turn reflects the fast-paced examination adopted by the Registry.

If you would like to share your experience working with the Indian Trademark Office or add a comment or thought on this article, please do email me at pooja@selvamandselvam.in