Must
an applicant have a bona fide intention to use the trademark?
Yes. An applicant must have a bona
fide intention to use the trademark for the specified goods or services.
However, if another similar mark already exists, the applicant must prove good
faith usage and lack of knowledge of the prior mark’s existence. The Director
General has discretion in deciding the eligibility of the mark for
registration.
Does
the trademark office perform relative examinations?
Yes. At the Examination Stage,
an examiner conducts searches for:
- Similar or identical marks in prior applications.
- Confusingly similar marks for the same goods/services.
If a prior similar mark is found, an
objection is raised. If the examiner finds any confusingly or
deceptively similar marks, the application may be:
- Refused,
or
- Issued a Show Cause Notice (TMR-12) under the Trademarks
Act, 2009.
What
other types of examinations does the trademark office perform?
In addition to relative examination,
a trademark may be refused based on:
- Lack of distinctiveness
- Similarity to well-known marks
- False connections or misleading implications
- Possible damage to interests of registered trademarks
Are
there public policy grounds for refusal?
Yes. A trademark may be refused if
it:
- Contains scandalous or obscene content
- Violates any existing law
- Is deceptive or misleading
- Hurts religious sentiments
- Uses official emblems, flags, or hallmarks of a
country or international organization
- Is filed in bad faith
Is
there a separate or supplemental register for descriptive marks?
No. Descriptive marks are
generally ineligible for registration unless the applicant can demonstrate distinctiveness
before the Director General of DPDT. Under Section 6 of the
Trademarks Act, 2009, the following may be eligible for registration:
- Company, individual, or firm names in a distinctive
style
- Signatures
- Invented words
- Words without direct reference to goods/services
Can
a third party object to a trademark before publication?
No. However, after publication in
the Trademark Journal, a third party may file an objection to the
registration.
Is
commercial use required for trademark registration?
No. Commercial use is not a
prerequisite for registration. However, if the mark is not used within five
years of registration, an aggrieved party may file a Cancellation/Rectification
Case.
How
long does it take to receive the first office action?
Under Rule 14 of the Trademark
Rules, 2015, the first office action (initial examination) is
typically issued within two months of application submission.
How
long does it take from application to publication?
If no objections arise during
examination, a trademark is usually published in the Trademark Journal
within six months of application filing. However, if objections are
raised, the timeline may vary.
Jun 23, 2023