Provisional Refusal of International Trademark in INDIA
Replying to Provisional Refusal of Trademark in India under the Madrid Protocol: What to Know when India is selected as designated country and the Indian trademark examiner issues provisional refusal for the filed trademark brand by Trademark applicant/owner.
Indian Trademark Law Framework
India joined the Madrid Protocol in 2013, integrating its trademark system with the international registration framework.
The Indian Trade Marks Act, 1999, and the Trade Marks Rules, 2017, govern trademark registrations and work in conjunction with the Madrid Protocol's international provisions. This relationship between domestic and international law creates a complex but navigable system for trademark protection in India.
Nature of Trademark Provisional Refusals
The nature of provisional refusals for applied trademark protection in India is not a final rejection but rather a formal notification.
This trademark rejection of the brand in India indicates potential obstacles to trademark registration in India raised by the trademark examiner in India. The Indian Trade Marks Registry issues these refusals within 18 months of receiving the international registration notification from WIPO, Geneva.
Response to File for Provisional TM Refusal
When India is selected while filing international trademark from home country, the timeline to respond is 30 days from the date of receiving the notification.
Therefore, while responding to a Provisional Refusal on a trademark application, the 30 days timeline is calculated from the date when the WIPO, International Bureau communicates the provisional refusal document to the authorized trademark representative of the trademark application filed.
Grounds for Refusal under Section 9
The Absolute Grounds of Refusal are mentioned under section 9. The trademark may lack distinctiveness and be descriptive.
The questioned trademark may be in conflict with public order or morality under the absolute grounds for refusal. Under Section 9(1)(a), the trademarks may devoid of distinctive character, example: generic terms or common trade descriptions and refusal of brand marks that don't distinguish goods/services.
Grounds for Refusal: Relative Grounds
The filed brand trademark conflicts with earlier trademark right registered in India. This includes similarity or identity with existing registered trademarks.
Even if similar pending trademark application is filed with India, it might be ground of refusal and especially if trademark user date is claimed. The examination considers visual, phonetic, and conceptual similarity. For instance, if "SPARKLY" is already registered for cleaning products, "SPARKL" for similar goods might face refusal.
Grounds for Refusal: Procedural Grounds
These include technical issues in the filed international trademark application in India such as improper specification of goods and services.
The procedural ground might also include incorrect classification of the said applicable good and services, or missing documentation. The Indian Trademark Registry is particularly strict about the clarity and precision of goods and services descriptions to create level playing field for the trademark in the Indian market.
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