Module_2

MODULE 2

PROCEDURE AFTER FILING OF THE TRADEMARK APPLICATION AND HOW
EXAMINATION PROCEDURE IS CONDUCTED

Once a trademark application is filed, there are various stages that the application needs to pass
through before finally getting registered like formality check pass, examination of the trademark
application, show cause hearing (not compulsory) etc. We will discuss each of these stages in
detail below.

2.1 FORMALITIES CHECK PASS

The first stage after filing of the Trademark application is “Formalities Check Pass”. Formality
check is an assessment by the Trademark Registry about whether the documentary and fee
criteria have been met or not. For example, whether the Power of Attorney (POA) has been filed
through an attorney, specifications being according to the Nice classification, appropriate
translation/transliteration (if applicable) has been filed and application fee has been paid in full
(See image 2.1).

If there is a lacuna in the filing of the trademark application, the status will reflect as
“Formalities Check Fail” and the applicant will receive a letter wherein he will be asked to
rectify the same.

Once the trademark application is filed and all the requirements have been fulfilled by the
applicant in relation to his filed trademark application, the trademark application will be queued
for examination by the Examiner. This is called the Examination of the Trademark Application.

Image 2.1: Status as Formalities Check Pass

2.2. EXAMINATION OF THE TRADEMARK APPLICATION

The trademark application is allotted to an examiner for examination under the provisions of the
Trademarks Act and Rules. The word ‘Examiner’ hereinafter includes any officer assigned the
duty of the examination of the trademark application. The allotment of applications to the
existing examiners for the purpose of examination is done automatically through the Trademarks
System and in order of the date and time of submission of the Trademark application.

If there is an obstacle in examining of the application, for example, proper data is not given, it is
in an unknown language, essential requirements are missing etc., the examiner can stop the
examination and send a letter to the applicant to comply with the requirements and then only
proceed to examine the application.

If the applicant wants to process his application on a priority basis, he can file for “Expedited
application” by paying six time the government fee for normal application.

While examining the application, the Examiner has to look at three things-

1. Whether the procedure as laid down in Trademark Rules, 2017 have been complied with;
2. Whether the application can be refused registration (on relative grounds and/or absolute

grounds) under the Trademarks Act, 1999, if yes, the reasons; and
3. Whether any restriction, condition or limitation is required to be imposed, in case the

application is accepted for registration

Hence, an examination report can have three parts to it-

A. Formalities objections- If the same have not been raised at the time of formalities check
pass i.e. Power of attorney not filed, details are missing in the application etc.

B. Objection to the trademark application under Section 9 and 11 and other provisions
C. Any limitation to the trademark i.e. if the mark consists of Motor India, then India will be

disclaimed, and the applicant cannot claim rights over the mark “India” and the proposals
for conditions of acceptance or limitation to use of the mark, in case the application is
accepted {(also called advertised before acceptance (ABA) or accepted and advertised
(AAA)}.
2.2.1. Examination Procedure

The Application is scrutinized on two main broad grounds-

A. Whether the trademark applied for registration can be refused registration-

i. On relative grounds under Section 11 of the Trademark Act, 1999

ii. Or absolute grounds under Section 9 of the Trademark Act, 1999, if
yes, the reasons.

Additional grounds include-

iii. Section 12: Whether the mark is entitled to registration on the basis of
honest and concurrent use?

iv. Section 13: Whether the mark consists of the name of the chemical or
international non-proprietary name?

v. Section 14: Whether the mark consists of the name of or
representation of living person or person recently dead?

vi. Section 2(1)(zb): Whether the mark applied for is a trade mark within
the scope of definition of a trade mark?

B. Whether any restriction, condition or limitation is required to be imposed, in case the
application is accepted for registration?

The examiner shall identify the nature of the application for registration, on the basis of the form
submitted i.e. single class application, multi-class application, convention country application. If
the form is incorrect i.e. certification mark has been applied on a form of single mark single class
application, then the application will be examined by the examiner as it is a normal application
irrespective of Form number, but the examiner will send a request for the change to be made
along with the examination report via filing of a TM-M.

The examiner shall ensure that the application for registration of a trademark has been filed with
proper specification of goods and/or services and with proper classification of such goods and/or
services. For the purpose of registration of trademark, the goods or services are to be classified in
accordance with current edition of International Classification of Goods and Service (Nice
Classification) (see image 2.2) published by the WIPO. In case the class of goods or services
mentioned in the application is other than the relevant class of the International Classification of
Goods and Services, as published by the Registrar of Trademarks, and no aspect of such goods or
services falls in the class mentioned in the application, the Examiner shall suggest the
appropriate class for those goods or services and ask the applicant to correct the class through a
request on form TM-M.

Image 2.2 Classification of Goods and Services as per Nice Classification of WIPO

If some of the goods or services mentioned in the application do not fall under the relevant class
of the International Classification of Goods and Services, as published by the Registrar of
Trademarks, but some fall in the appropriate class or category, the Examiner shall require the
applicant to delete items not falling in the class applied for and confine the goods or services
which fall in that class through a request on form TM-M. For example, if an application for
registration of trademark in respect of ‘cosmetics’, ‘medicines’ and ‘readymade garments’ is
filed in Class 3, the Examiner shall require the applicant to delete items ‘medicines’ and
‘readymade garments’ from the specification of goods by a request on form TM-M. (See Image
2.3 Form TM-M for online filing, includes several categories) and (See Image 2.4.1, Image 2.4.2
Form TM-M for physical filing, includes several categories).

According to section 11(1) of the Trademarks Act 1999, a trademark shall not be registered if,
because of its identity or similarity with earlier trademark(s) and because of identity or similarity
of goods or services covered by such trademarks, there exists a likelihood of confusion on the
part of the public, which includes the likelihood of association with the earlier trademark (See
Image 2.5).

Image 2.3 Form TM-M for Online Filing

Image 2.4.1 Form TM-M for Physical Filing(part-1)

Image 2.4.2 Form TM-M for Physical Filing(part-2)

-
Image 2.5 – Objection under Section 11 (called ‘Relative Grounds of objection’) of the

Trademark Act, 1999

The three most relevant factors in examination of trademark application by the Office are
usually-

a) The similarities and differences between the respective trademarks,

b) Which mark is prior in point of time, and

c) The degree of similarity between the respective goods or services.

General rules for comparison of marks have been discussed in Cadila Healthcare Limited vs.
Cadila Pharmaceutical Limited1.

Therefore, in order to differentiate the mark, if an objection is raised under section 11, it will also
be these three factors which would be considered. For example, if the mark “BFILLOWV” is
cited against your mark “FILLOW”, we can differentiate it on-

• That the use of our mark is prior and hence our right is superior as per Century traders v.
Roshan Lal Duggar2

• The marks should be compared as whole and if the marks when compared as a whole are
different like Fillow v. Bfillowv, we can see that no one will confuse the two marks even
though your mark is incorporated in the cited mark under section 11 (Hiralal Parbhudas
v Ganesh Trading3 by the Bombay High Court)

• If the goods and services are different, then is such a scenario, there will be no confusion
and the said mark can be overcome.

The general well settled principles for comparison of trademarks are-

• The trademark must be considered as a whole. It is incorrect to take a part of the
trademark and compare it with part of another trademark

• No meticulous or letter-by-letter comparison is required. Side-by-side comparison is not
the correct test. Comparison should be made from the point of view of a person of
average intelligence and of imperfect recollection.

1 Cadila Healthcare Limited vs. Cadila Pharmaceutical Limited, AIR 2001 SC 1952.
2 Century traders v. Roshan Lal Duggar, AIR 1978 Delhi 250.
3 Hiralal Parbhudas v Ganesh Trading, AIR 1984 Bom 218.

• The overall structural, visual and phonetic similarity and similarity of the idea in the two
marks and the fact as to whether it is reasonable likelihood to cause confusion, should be
taken into account.

Illustrations – DEMOTIC similar to DEMON, tennis racquets. Slazenger v Feltham (1889)6
RPC 531 (CA) (Passing off); (1906)23 RPC 774 at 777 (“Neola” held not similar to “Pianola”,
goods pianos).

The examiner shall examine the application to determine if the trademark applied for registration
is capable of distinguishing goods or services of one person from those of other and its
registration is liable to be refused under section 9 of the Trademarks Act 1999 (See Image 2.6).

Section 9(1) of the Act sets down the following absolute grounds for refusal of registration-

a) trademarks which are devoid of any distinctive character; that is to say,
not capable of distinguishing the goods or services of one person from
those of another person;

b) trademarks which consist exclusively of marks or indications which may
serve in trade, to designate the kind, quality, quantity, intended purpose,
value, geographical origin, or the time of production of goods or of
rendering of services, or other characteristics of goods or service,

c) trademarks which consist exclusively of marks or indications which
have become customary in the current language or in the bona fide and
established practices of the trade.

2.2.2. Section 9(1)(a)- Devoid of distinctive character of the Trademarks Act, 1999

If the said objection is ever raised, you can easily overcome it by making the following
arguments. In this regard, referring to the four types of marks earlier discussed in chapter one,
remember that there are three types of marks that are inherently distinctive-

• Arbitrary marks, wherein the trademark could be a dictionary word e.g. Apple but has no
reference to the goods it is used for e.g. Computers.

• Fanciful/invented mark: These are invented words and have no dictionary meaning and
are considered inherently distinctive i.e. NIKON, XEROX

• Suggestive marks: These marks use words which require a little imagination in order to
be able to connect the goods with the trademark e.g. Shoppers Stop, it does not describe
that the said brand deals in Retail services but can be inferred with a little imagination

On the other hand, descriptive marks, i.e. the marks are descriptive of the goods they are used
for, are too weak as trademarks as everyone in the trade/business/sector would be using that
particular word to describe their goods/services. However, there is a concept known as
“secondary meaning” which states that if your mark, even though descriptive, has been in use
long enough to be able for the consumers to associate the said trademark with the applicant, the
same can allowed to be registered. The secondary use can be supplemented by long use of the
mark i.e. 5-10 years minimum, sales figures, advertising expenditure and advertising proof i.e.
newspaper cuttings and social media pages i.e. Facebook, Instagram etc.

Therefore, an objection of being devoid of distinctiveness can be overcome instantly if your
mark is either of the three i.e. fanciful, arbitrary or suggestive. If it is descriptive, then you would
need to show acquired secondary meaning. Generic marks like clocks for clocks are in no way
allowed to be registered. The premise of the concept of “secondary meaning” is also enshrined
under section 32 of the Trademarks Act, 1999 which states that-

32. Protection of registration on ground of distinctiveness in certain cases-

Where a trade mark is registered in breach of sub-section (1) of section 9, it shall not be
declared invalid if, in consequence of the use which has been made of it, it has after registration
and before commencement of any legal proceedings challenging the validity of such registration,
acquired a distinctive character in relation to the goods or services for which it is registered.

2.2.3. Section 9(1)(b) of the Trademarks Act, 1999

Trademarks which consist exclusively of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of the service or other characteristics of the goods or
services cannot be registered.

The expression “may serve in trade” means that there is a likelihood that other honest traders will
wish to use the mark in question to designate characteristics of the goods/services.

The term “kind” would mean the feature or particular kind of the goods or services claimed. Any
words recognized as indicating a feature of the product as big, small, extra-large, extra-small,
new, old etc. would fall in this category and is as such objectionable in respect of any goods or
service

The term “quality” includes Premium, Amazing, Best, Good, Great etc. These are terms used by
brands to “puff” up their brand to increase sales, such as the use of “BEST IN THE WORLD” is
allowed as they are referred to as Puffery and used by all brands. However, the same cannot be
trademarked as they are laudatory terms.

The term “quantity” implies that numerals would not be acceptable wherein they describe or
make a reference to maybe the number of quantities of those goods in the pack. For example, if a
cigarettes pack has 20 pieces, it cannot be called 20. If there is 8% alcohol in a beer it cannot be
referred to as 8%.

The term “Intended purpose” refers to the situation where trademarks make a reference to the
purpose the good will be used for, or which describes the purpose of providing the service/good.
Such terms are not registrable as a trademark. For example, Hair spa for hair products, L’Oréal
has a trademark registration for the same and it is under challenge by way of rectification; SLIM
AND FIT for slimming preparations. Words which describe the effect of the goods/services
would also be open to objection as a characteristic of the goods/services, for example, SHINY
for paints.

The term “Value” refers to words or symbols which merely serve to indicate the worth merit or
importance of the goods or services. For example, 24 karats for gold or Solitaire for diamond.

With reference to the term “Geographical origin”, according to the Trademark Manual, the name
of places with population less than 5000 in India will prima facie be acceptable. The reason
behind rejecting geographical names as trademark is that certain areas are known for their
distinct goods, for example, Kohlapur ki chaapal, Agra ka Petha and Banarsi Paan. If the
location covers a large area having a reputation in respect of the good or service, the application

may attract objections such as Bharat, India, Gujarat, Delhi etc. Even combination of two name
of geographical names is not allowed like Delhi to Amritsar for a bus service. However, names
like the North Pole, Atlantic, Pacific, where there is no likelihood of goods coming from, can be
allowed to be registered.

Sometimes the applicant can show that their business grew from a town and that town became
famous because of that applicant. In such a scenario, the name of that town can be trademarked.
One such example is Modinagar in Uttar Pradesh which was set up around the Modi Mill for
sugar mills.

With reference to geographical origin, it also becomes imperative to discuss the Geographical
Indication Act, 1999. The Act is aimed to give protection to a state for the goods famous in that
state. Geographical Indicator is one of the categories of Intellectual Property Rights where the
registration focuses on a name or sign corresponding to a specific geographical location. The use
of a geographical indication, as a type of indication of source, acts as a certification that-

• The product possesses certain qualities,
• Is made according to traditional methods, or
• Enjoys a certain reputation, due to its geographical origin.

Every region has its claim to fame. The reputation for a certain good is carefully built and
painstakingly maintained by the people of that region combining the best of ingredients,
technical know-how and sometimes environment, traditionally handed over from one generation
to the next for centuries. Gradually, a specific link between the goods and place of production
evolved resulting in the growth of the concept of “geographical indications”. Some examples of
Geographical Indications would be Darjeeling Tea owned by West Bengal under Application
No. 1 and 2 for word and logo, Mysore silk owned by Karnataka under Application no. 11,
Madhubani Paintings by Bihar under Application no. 35.

Under section 25 of the Geographical Indication Act, 1999, the removal of a trademark suo motu
or on application by the interested party, is allowed. However, under section 26, if the trademark
was registered before the Geographical Indication Act, 1999 came into place, the said trademark
can subsist.

2.2.4. Section 9(1)(c) of the Trademarks Act, 1999

Section 9(1)(c) of the Act applies where the mark consists of a word which has become
customary in the current language or in the bona fide and established practices of the trade. The
expression “trade” means the “trade” which is concerned with the goods or services covered by
the application.

2.2.5. Section 9(2) of the Trademarks Act, 1999

Section 9(2) prohibits registration of a trademark–

a) If the mark is of such nature as to deceive the public or cause confuse: This objection is raised
when the mark is deceiving the public. For example, if someone tries to register the word
“CURE FOR AIDS”. Such a mark would be deceptive in nature as there is no cure for AIDS.

b) If it contains or comprises of any matter likely to hurt the religious susceptibilities of any class
or section of the citizens of India- Usually, under this provision, the image of goods is not
allowed to be registered. However, it only states that the image should be such that it should hurt
the religious sentiments. Therefore, as long as the image depicts a god in a clean image, it can be
allowed to be registered. However, it is also important to consider the goods to which the mark
will be applied. The use of a Hindu god for meat products or bathroom accessories will likely hit
religious sentiments and can be refused on that ground.

c) If it comprises or contains scandalous or obscene matters- Obscene material like nude images,
sexual acts or cuss words, are not allowed to be registered under this section. The test for this
section is to be objective and not case-to-case basis. If a term is casteist, racist or vulgar, it will
not be allowed to be registered. In a similar manner, an application for the word “Blue FilM”
which is a reference to porn or “Inject the white stuff” which could be a reference to Heroin,
cannot be allowed to be registered.

d) If its use is prohibited under the Emblems and Names (Prevention of Improper use) Act, 1950-
Section 4(b) of the Emblems Act prohibits registration of anything as trademark or design which
bears any emblem or name the use of which is in contravention of section 3 of the Emblems Act.

The prohibited name or emblem is specified in the Schedule to the said Act. Under section 8, the
Central Government is empowered to add or alter the Schedule.

Item 7 of the Schedule expressly includes “any name which may suggest or may calculate to
suggest –

• Patronage of the Govt. of India or Government of a State
• Connection with any local authorities or any corporation or body constituted by the

Government under any law for the time being in force.

Certain guidelines under Item 7 have been issued by the Central Government, in terms of which
registration of any name is prohibited under the Emblems Act, if:

a) It is identical with the name of any society/corporation or local body which has been set
up by the Government of India or State Government under any law for the time being in
force;

b) It gives the impression of patronage of Central Government or State Government. For
example, Indian Council of Agricultural Research (ICAR) is a registered body under the
Ministry of Agriculture and Co-operation. Any name beginning with the words “Indian
Council of” may mislead the public that it is patronized by the Government.

c) It too nearly resembles a name of body corporation or local authority set up by
Government under any law for the time being in force. For example, ‘Indian Institute of
Mass Communication’ is an autonomous body under Ministry of Communication. Names
like Institute of Mass Communication may give the impression and the said society is
also patronized by the Central Government.

The Central Government has issued directions not to register the following trademarks. These
trademarks are therefore, not registrable in view of Section 23 (1) of the Trademarks Act, 1999:

a. Words “UNITED NATIONS”, letters “UNO” and the official
Seal and Emblem of UNO.

b. The device of an arrow on the ground that is the property of the
Government of India.

c. Letters “N.C.L.”

d. Letters “I.S.I.” if applied by any person or body other than the
Indian Standards Institution

e. Letters “I.C.S.”,

f. Letters “N.P.L.”

g. Words “ASHOK CHAKRA” or DHARMA CHAKRA” or the
device of Asoka Chakra or any other colorable limitation
thereof.

h. The British Royal Arms, The British Crown or the Union jack
or any colorable limitation thereof.

i. Letters “I.S.O.” if applied by any person or body other than the
Indian Standards Institution.

j. Words “Lord Buddha” or the device of Lord Buddha or any
colorable imitation thereof.

k. Words “Shree Sai Baba” or the device of Shree Sai Baba or
any colorable imitation thereof.

l. Words “Sri Ramkrishna, Swami Vivekananda, the Holy
Mother alias Sri Sarada Devi or the devices of Sri Ramkrishna,
Swami Vivekananda, the Holy Mother alias Sri Sarada Devi
and the Emblems of the Ramkrishna Math and Mission or
colorable imitation thereof.

m. Words “National”, and “Panchsheel”,

n. Following common names for pesticides: -ALDRIN
DINEXALLETHRIN DINOSAMBHC NEODGAMMA-BHC
MAZIDOXCHLORDANE MIPAFOXCHLOROBENZILATE

CHLORFENSONPP-DDT CHLORPROPHAMDDT

DINOPROPDIAZINON DNOCDIELDRIN ENDRINDNC

FENSONHEPTACHLOR HHNDHETHOXYCHLOR

LINDANEPARATHION WARFARINSCHRADAN

ATRATONTOXAPHENE AZINPHOS-ETHYLFERBAM

AZINPHOS-METHYLTHIRAM DAZOMETZINEB

DIMETHOATE2,4,D FENOPROP2,4,5-T FENTHIONMCPA

MECARBAMPROPHAM MEVINPHOSANTU

MORPHOTHIONMALATHION

PARAQUATCHLORBENSIDE*

o. Letters “IR”

p. Names and pictures of Sikh Gurus, viz. Guru Nanak, guru
Angad, Guru Amar das, Guru Ram Das, Guru Arjun dev, Guru
Hargobind, guru Har Raj, Guru Har Krishnan, Guru Teg
Bahadur and Guru Govind Singh

q. Name and picture of Chhatrapati Shivaji Maharaj

r. Letters “STC”.

s. Name and/or picture of the deity of Lord Venkateswara and/or
Balaji

t. Representation of the Election Symbol of any political party in
India.

2.2.6. Section 9(3) of the Trademarks Act, 1999

Under section 9(3), a mark is not registrable as a trademark if it consists exclusively of-

§ the shape of goods which results from the nature of the goods themselves;
or

§ the shape of goods which is necessary to obtain a technical result; or

§ the shape which gives substantial value to the goods.
2.2.7. Section 13 of the Trademarks Act, 1999

Section 13 talks about the prohibition of registration of names of chemical elements or
international non-Proprietary names as trademark. The registration of a word as a trademark,
which is commonly used and accepted name of any single chemical element or compound in
respect of chemical substances or preparation is prohibited. Also, the law prohibits registration of
a word which is declared by the World Health Organization (WHO) and notified by the Registrar
as international non-proprietary name, or which is deceptively similar to such name.

After conducting the examination of the trademark application, the examination report will be
sent to the applicant. According to the new rules, the examination report is now served by e-mail.
It is also advisable to keep checking the status of the Trademark Application to be able to know
if the examination report has been generated. The applicant will need to reply to the same in
written in 30 days or his application will be abandoned.

The procedure post the generation of the examination report is discussed in the next chapter.

Image 2.6 – Objections under Section 9 (called ‘Absolute Grounds of objection’) of the
Trademark Act, 1999