You filed, and now you wait. The Registry has taken it upon itself to teach counsel what a virtue patience is — but on some occasions it is not at fault. It may be waiting on something from you, and it will not necessarily tell you so.
1. Formalities check failure
Where your mark is in a language other than English or Hindi, you must provide a translation and transliteration at the time of filing. A failure alert is also raised where other required details — the user statement, the applicant’s legal status, or other mandatory information — are missing from the application.
2. Sent back to EDP
This alert is raised principally where your logo, label or device was not scanned properly, or a data integrity error occurred in the back office.
For both of these, the Registry does not send an email or paper notification to the counsel on record or the applicant. Months pass with no progress on the application.
Solution: approach the Registry promptly and comply with whatever it requires to let the application proceed.
3. An examination report you didn’t know about
Months are frequently lost because the Registry does not intimate the applicant or counsel when an application is examined. The online status is updated to “Examination Report Issued” or “Objected”.
Solution: follow up regularly and check the online records, so you learn of examination promptly and can respond while the application still has momentum.
Note: electronic service under the 2017 Rules has improved this considerably — communications may now be sent by email to the address on record. That makes keeping a current email address with the Registry genuinely important, since deadlines run from service. Independent monitoring remains the safer practice.
4. Unpaid excess character fees
An application may be filed with an unlimited specification, but each character beyond 500 in the specification attracted an additional fee per character. Where that fee is unpaid, the Registry flags the application and holds it — visible online as a TM-61 alert.
Again, no alert is issued, and counsel must check manually at intervals. In one example, an application filed in December 2012 had almost certainly been flagged in early 2013 — and had still not been taken up for examination because the excess character fee was never paid.
Solution: file online, where the system calculates the excess character fee so it can be paid at filing. For existing applications, check the character count and pay.
Note: the fee structure was reset by the 2017 Rules, so verify the current fee schedule before assuming an excess-character charge applies. The practical discipline — a tight specification — holds regardless.
5. A pending amendment to the user statement
An application may be filed on an intent to use basis or claiming use in India. Applications are often filed as intent-to-use despite there having been actual use.
Amendment is possible under law, but the Registry had for some years refused to amend the usage date — and an application with a pending amendment request could be side-lined entirely, progressing no further. The IP attorneys’ association had filed a case in the Delhi High Court challenging the practice.
Solution: withdraw the amendment application, allowing the trademark application to move forward, or file a fresh application with the correct user statement.
Note: this reflects the position at the time. Since the 2017 Rules, a claimed use date must in any event be supported by a user affidavit with evidence under Rule 25 — so the better course is to get the user statement right at filing, and to claim only a date you can evidence.
6. Your counsel
When you decided to file, you may have asked the lawyer friend who helped with your employment agreement or shareholders’ agreement. Lawyers being obliging, they would have agreed — it is only filling in a few forms.
It is not. Trademark prosecution in India requires legal knowledge, strategic and proactive advice, and constant follow-up with the Registry. Most of the five problems above are invisible unless someone is actively watching the file.
Solution: ask for a list of trademark matters the counsel has handled, and check their professional background.
The point
These are not exhaustive. The Registry handles an enormous volume of applications and the backlog is a perennial issue. While it works through that, everything at your end needs taking care of — because nothing will tell you when it hasn’t been.
Filing the application was only the start.
The takeaways
- The Registry rarely notifies you of formalities failures, EDP errors or examination.
- Check status online at intervals — an unpaid fee can hold a file for years.
- Get the user statement right at filing — amendments stall applications.
- Trademark prosecution needs a specialist, not a general practitioner filling forms.
Frequently asked questions
Why has my Indian trademark application not moved for months? Common causes include a failed formalities check, an EDP error, an examination report you were not notified of, an unpaid fee, or a pending amendment application.
Does the Registry notify me when my application is examined? Not reliably in the past. Electronic service under the 2017 Rules has improved this, but independent monitoring of the online status remains the safer practice.
Can I amend the user statement on my application? Amendment is possible in law, but has historically stalled applications. Since the 2017 Rules a claimed use date needs a supporting affidavit, so it is better to get it right at filing.
Does the specification length affect fees? It did under the earlier fee structure, where characters beyond 500 attracted a per-character charge. Check the current schedule — but a tight specification remains good practice regardless.
Useful official resources
- Trade Marks Registry — IP India
- The Trade Marks Act, 1999