So you’ve planned and taken all necessary precautions before filing or instructing your Counsel in India to file your trademark application (For best practices on filing an application in India click here.) and it has been filed, and now you’re waiting. While the Registry has taken it upon itself to teach all counsels how much of a virtue patience is, on some occasions they may not be at fault. It may well be, that the Registry is in fact waiting on something from your end. Here are the top six things that may be stalling your trademark application at the moment.
- Formalities check fail: When your trademark is in any other language other than English or Hindi then you would have to provide the translation and transliteration of the trademark at the time of filing the application. Additionally when other details such as user statement, legal status of the applicant or any information that has to be submitted is not mentioned in the application a formalities check failed alert is raised.
- Sent back to EDP (Electronic Data Processing): This alert is raised primarily when your trademark logo/label/device is not scanned properly or some data integrity error was committed by the back office team.
Unfortunately the trademark office does not send an email or a paper notification to the counsel on record or the applicant when such an alerts are raised. Several months pass by without any progress on the application.
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Solutions: Approach the trademark office immediately and comply with any requirements that the trademark office might require to allow the application to proceed further.
- Examination report was issued and you did not know about it: In many instances several months are wasted as the trademark office does not intimate the applicant or the counsel when the trademark application is examined. The online status is however updated to “Examination Report Issued” or “Objected” as the case may be.
Solution: By regularly following up with the trademark office requesting examination and checking the online records of the trademark office you would know when the application is examined and an immediate response can be filed which would result in the application moving forward to the next stage.
- Excess Characters in the Specification of goods and services: The application for registration of a trademark in India can be filed with unlimited specification of goods or services. However each character in excess of 500 characters of the specifications will incur an additional fee of Rs.10 per character. When the fee is not paid the trademark office flags the application and puts the same on hold until the excess character fee is paid.
You can check the status of your application online and you will see a TM-61 alert raised by the trademark office as shown in the picture below.
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Once again no alert is issued by the trademark office and the applicant or the counsel for the applicant has to check this manually at regular intervals. In the example shown above you will note that the application was filed in December 2012 and the alert would have probably been issued in the early 2013, but since the fee to include the excess characters was not paid the application has not been taken up for examination.
Solution: File your application online where the system calculates the fee for the excess characters and you can pay it at the time of filing the application. For existing applications make a quick check on the number of characters in the specification of goods or services and pay the fees for the excess characters.
- Amendment applications – Statement of use: An application for registration of a trademark in India can be filed on an intent to use basis or claiming use of the trademark in India. On many occasions the applications are filed on an intent to use basis even though there was actual usage of the trademark in India. Even though an amendment of the same is possible under law, in the last few years the trademark office has refused to amend the usage date. If you have filed an application to amend your user statement it is highly possible that the trademark office has side-lined your application without processing it any further due to the amendment application. The IP attorneys association has filed a case before the Delhi High Court against this practise but we have to wait and see what the court decides ultimately.
Solution: You can withdraw the amendment application which will allow the trademark application to move forward or alternatively you can file a fresh application with the user statement and with respect of the present application wait for the court to decide.
- Your Trademark counsel: When you decided to file a trademark application you probably asked that lawyer friend of yours who helped you draft your employment agreement or your share holder agreement. Lawyers, as nice they always are, would have agreed to file your application with the trademark office since it was just filling up a few forms. Did he say just filling up a few forms? Boy, was he wrong. It is very important that you choose a counsel who has experience handling trademark matters. Trademark prosecution in India not only requires legal knowledge but also strategic proactive advice and constant following up with the trademark office.
Solution: Ask the counsel for a list of trademark matters handled by them. Checking their LinkedIn profile also helps to gather information on their experience.
While these are some of the main reasons causing delays it is by no means exhaustive. The Registry handles far too many trademark applications and the backlog is an eternal issue. So while the Registry rallies itself, you need to take care of everything from your end.
Filing your application was just the start!