Filed a trademark application but not sure as to when the same will get registered? This normally happens with everyone who is not from the legal background. Unlike other registration which normally takes a few days and in some cases a month time, a trademark registration process spans from anywhere between 9 Months to 24 Months. In some exception cases, trademark registration may even take longer time than usual.
While there is not much we can do except waiting for the duration, what is more important here is to be aware about the stages it passes through and how a trademark application status changes over the period. For your information, the status of a trademark application can be easily tracked online using the government portal. However, to have a precise idea of your trademark status, you must first understand what each status entails. In this short and quick manual of Trademark Registration, the Compliance Calendar LLP has compiled all stages of trademark status in one place for easy comprehension.
The first step is to file a trademark application. The moment this is done, you are free to use a TM mark next to your brand name, logo or design. The trademark application is filed by filing the Form TM-A via online/ offline mode. This enables the entry of the trademark application details in the database of the trademark registry and marks completion of the first baby step. Mostly, after this stage, many Founders forget about the Trademark Application and presume their Trademark Registration Certificate will arrive.
Let us simplify the broad categories of Status of Trademark Applications. Kindly be apprised that all status may not come in each trademark application, and it shall vary on case to case basic.
This is the stage where your application will be marked as "Send to Vienna Codification" only if you have applied for non-text trademarks. If your trademark includes a logo, label, or specific artwork, it is usually assigned a numerical code. And this numerical code adheres to the Vienna Codification. These trademarks are also known as DEVICE Marks.
The stage of Formalities Chk Pass of the trademark means that the Trademark Registry has accepted all the initial/preliminary documents submitted with the application. In other words, there are no issues with the submitted documentation. If you have followed all the procedures correctly, your trademark status will reflect as “Formalities Chk Pass”. For your information, Trademark Registry can still at a later stage may ask to change certain things by asking to file TM-M.
Formalities Chk Failed means that the preliminary check of the application was unsuccessful, and essentially the application did not have all the required documents, or the documents were unclear. More so, the application was not filed correctly, and an amendment form is required to be submitted through filing TM-M, subject to the applicable payment of INR 900 (Online Mode / INR 1000 (Offline Mode) as the case may be in the case of "Formalities Chk Failed".
If you have received the status as "Marked for Exam", it indicates that your trademark application will be reviewed by an Examiner to determine its registrability. According to the provisions of the Trademark Act, the Examiner will determine whether your trademark qualifies for registration. A Trademark Examiner will also examine submitted documents and applications to ensure that they are complete in all aspects as per the Trademark Law.
The status as the Examination Report Issued means that Trademark Registrar has completed the examination of your Trademark Application for your applicable class. It may contain as Accepted/ Objected status. If it shows as Accepted, you need not do anything. However, if the Examination Report Issued contains the objection based on Section 9 or Section 11, the same will be marked as “Awaiting for the Reply to the Examination Report”. If you have received Examination Report with Objection under Section 9 or 11, you are required to submit REPLY TO EXAMINATION REPORT within 1 Month to parm.tmr@nic.in or alternatively the same can also by filed through online portal as MIS-R.
The Trademark Registry may show the status as Objected to the registration of your trademark objection under section 9 or 11, and in such case, the trademark status on the online Trademark portal will show as Objected. If your trademark is objected, then you must file a REPLY TO EXAMINATION REPORT within one month of receiving the copy of the Examination Report. Click here to know how best you can file Reply to the Examination Report.
Note: Did you know that you can directly request for HEARING of Trademark Application without filing "Reply to the Examination Report (MIS-R)". However, it is suggested to first file a reply to the examination report.
If you do not respond to the Trademark Registrar within the time frame specified, such as the REPLY TO THE EXAMINATION REPORT or you do not File Counter Statement if you trademark application has been opposed, your TM application will be Abandoned for the want of action from your end in the limited time frame. However, it does not prohibit you to file a fresh application next time. Note that once a TM Application has been marked as "Abandoned", it can not be re-activated. What you can do instead is to file a fresh application if your present TM Application has been Abandoned and you still want that Trademark to be registered.
Ready for Show Cause Hearing means that the Trademark Examiner is not satisfied with your REPLY TO THE EXAMINATION REPORT (MIS-R), and as per Trade Marks Law, you are eligible for the opportunity to explain as to why your trademark should not be refused. If you have filed TM Application in your individual capacity, you must appear at the Hearing on the scheduled date and time; otherwise, your trademark may be refused or abandoned. However, it is suggested to engage a TM Attorney/ Agent who can present your arguments and contentions in a better way for "Ready for show cause hearing". If you have filed TM Application with some TM Attorney/ Agent, they can appear for your Trademark through Power of Attorney (POA). In case, existing TM Attorney/ Agent are not competent/ not available, you can always hire others to present your case with the Hearing Officer.
Advertised before Accepted means that your trademark has been published in the Trademark Journal, but the Registrar is not completely satisfied with the distinctive nature of the applied mark and your mark is published to allow any third party to oppose your mark before it is accepted. It is also important to appreciate that Trademark Registry may refuse the trademark even after "Advertised before Accepted" irrespective of the fact that whether any opposition has been made by any third party.
The status as "Accepted" means that the Examiner has not raised any objections during the examination or if there was any objection earlier, the same has been waived off on merit owing to your REPLY TO EXAMINATION REPORT or on the basis of the Hearing (as the case may be). Post this trademark application is published in the Trademark Journal, prior to receiving TM Registration Certificate. At this point, the applicant is not required to take any action other than keeping an eye on the progress of the application for the next status as Accepted & Advertised.
The status and stage of "Accepted and Advertised" indicates that your trademark application has been published in a Trademark Journal. At this stage, it becomes super crucial to keep checking if there is any Opposition (TM-O) has been filed by third party against the registration of your trademark application within the next 4 months. If TM-O has been filed, it becomes a litigation case where you have to fight with the Opposing party before the Trademark Registry.
After the trademark is published in the Trademark Journal, a third party has four months to file an Opposition via TM-O and in such cases, the trademark application status is "marked as Opposed". In case, Opposition has been filed by the Well-Known Trademarks, the fight becomes more intense as they hire top IP Attorneys. However, if presented well; you can win your case. The procedure begins by filing a Counter Statement against the Opposition.
If the Examiner is not satisfied with your Reply to Examination Report or Hearing Arguments, then the TM Department may cause it to be "Refused" to register your trademark application.
This is the stage where every trademark application wants to reach which means that your TM Application has succeeded. Your trademark is now registered with the trademark registry. The Trademark Registry issues a Certificate of Registration to the applicant after four months of the application is published in the journal or Opposition (if any) has been removed on merit. At this juncture, the trademark application status is changed to "Registered". After registration of trademark, you can also find a link to download Trademark Registration Certificate on the online portal of the Trademarks.
When an applicant fails to meet any of the Trademark Registry's conditions, the trademark is "Removed" from the register. For example, the removal could be due to the trademark not being renewed on time.
When you voluntarily withdraw your trademark application, the status of your application will change to ‘withdrawn’. For example, if the applicant's mark is not acceptable to the trademark registry, then the applicant may choose to withdraw his application.
For any businessmen, it is important to safeguard their IP. One that is mostly used IP is the Trademark and if you look at the trademark registration process as elaborated above, it can take anywhere between 9 -24 months. If you are an entrepreneur, you must keep an eye on the trademark application stages during the application process to timely respond to any concerns of the Trademark Registrar.
Trademark registration is a complex and time-consuming process that requires extensive documentation and truckloads of expertise. Therefore, we recommend that you take the services of trademark experts like Compliance Calendar LLP if you wish to register a trademark. Don't hesitate, get our team to your trademark registration today!