Scrutiny Report or Discrepancy Notice

If the Trademark Office finds that any documents/forms submitted with respect to a trademark application require additional clarification and substantiation by document submission or the appropriate documents have not been filed, a notice is issued detailing the deficiency. This notice is commonly referred to as a Discrepancy notice or Scrutiny Report which is communicated to the Applicant/Applicant’s agent. Generally, Discrepancy notice or Scrutiny Report have been known to be issued where amendment requests have been made in respect of a trademark application.

For example, if a request for assignment of a trademark is filed, but the Indian Trademark Office requires more clarity on the matter or where the appropriate document is not filed, it issues a Discrepancy notice or Scrutiny Report detailing the deficiency.

Yet another example where it can be issued is when a request has been erroneously filed on an incompatible form. For example, where a mark has been transferred via the assignment, a request to change the name of the registered proprietor has been erroneously filed. In this case, the Registry would issue a notice instructing the Applicant to file the appropriate request.

Upon receipt of the notice, the Applicant is required to address the deficiency by way of filing a reply within 30 days.

We will now answer two of the most asked questions in respect of Discrepancy notice or Scrutiny Report issued by the trademark office.

1. Is the issuance of the notice a mandatory stage of trademark prosecution in India?

Any application or form that is submitted to the Trade Marks Registry is scrutinized for compliance with the Trade Marks Act, 1999 and the corresponding Trademark Rules. Upon scrutiny, if any deficiencies with regard to compliance are found in the application/submission, a notice is issued. Thus, Discrepancy notices or Scrutiny Reports are not inevitable but probable during trademark prosecution in India.

2. Is it possible to get a notice even after registration of the mark?

Yes, any requests filed with respect to a trademark application are scrutinized, be it before registration or after obtaining registration. It can be issued at any stage of the prosecution where any deficiency is perceived. For example, where requests for change of name or change of address of the Registered proprietor or even an assignment of the registered trademark is filed after registration and if found to be deficient in any aspect, can result in the notice being issued.

Responding to a Discrepancy notice or Scrutiny Report is a time-sensitive task. Failing to respond on time may result in the request being abandoned by the trademark office. If you receive a notice please do respond to it immediately or if required consult your lawyer or the trademark agent.

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