The Effective way to overcome objections by Indian TMO – Selvam & Selvam

In today’s globalized world, transborder reputation and the growing international presence of companies are undeniable realities. Intellectual property (IP) has become a critical aspect of business strategy, especially with the rise in counterfeit goods and bad-faith trademark registrations in foreign markets that seek to exploit well-known brands. With such being the case, the international application/ Madrid application through WIPO offers a highly effective solution, allowing Applicants/Businesses to claim global protection of their brand through a single application in around 131 countries as of today, making it a powerful tool!

While the Madrid Protocol is advantageous, it comes with its own challenges, particularly as each designated country examines the application according to its local laws. India is no exception, and navigating the country’s trademark registration process can be complex.

To better tackle the common objections faced by the Applicant’s during examination of their international application in India, we have put together some of the most frequent challenges and the most effective strategies to overcome them.

1. Being a foreigner, can the Applicant directly file response to provisional refusals/objections/oppositions without engaging a local counsel?

No, a foreign applicant cannot directly file responses to provisional refusals, objections, or oppositions without engaging a local counsel. As per Indian law, any act performed before the Registrar of Trade Marks must be carried out by a legal practitioner who is registered as a trademark agent, with the exception of submitting affidavits. As such, foreign applicants are required to appoint a local counsel to represent them in filing responses. (Section 145 of Trade Marks Act, 1999)

2. The Indian Trade Marks Office has issued multiple provisional refusals – How to proceed?

It is not uncommon for the Indian Trade Marks Office (TMO) to issue multiple provisional refusals in international applications under the Madrid Protocol. Despite this being an unusual practice, it is recommended that the response for each for them is filed by the Applicant within the prescribed deadline and request for the Hearing officer to take the same on record at the time of hearing (if any). Failure to submit response to the provisional refusal is a ground for abandoning the application on grounds of non-prosecution, and it’s important to note that there is no legal restriction preventing the TMO from issuing multiple refusals for the same application.

In our experience, issuance of such multiple provisional refusals often results in significant delays in the processing of the application, leaving applicants in a challenging position. In such cases, constant follow ups with the Trade Marks Office are a necessity to process the application further. Most recently, the IPO Help Desk launched by the Trade Marks Office is proving to be useful for many matters, and raising a ticket in this forum has helped to push the application forward to the next stage. 

3. The Trade Marks Office has objected only under one class but why is the entire application provisionally refused? How to tackle it effectively?

Please note that the application will always be reviewed in its entirety, therefore, despite the objection being raised only under few classes, the entire application will be provisionally refused until the objection is successfully addressed and resolved. Alternatively, if convenient, it is always easier and time effective to delete the conflicting class in the international application and allow the application to proceed further in the other classes. One can always re-file the application in the objected class alone as a national application which will enable for faster processing of the application in other classes.

4. How to overcome the ® symbol objection raised by the Trade Marks Office? Can an amendment request be filed to submit a copy of the logo without the ® symbol?

In India, the ® symbol can only be used when the subject mark attains registration.  Use of ® sign in unregistered trademarks is prohibited in India. Thus, even though the same is an acceptable process in other jurisdictions, the application will not be processed if the same has been applied with a ® symbol in India.

We have come across several such instances in the past whereby IR applications face the very same objection and direction by the Indian Trademark Office to remove the ® symbol, however, requests to remove the ® symbol from the marks are not entertained the Indian Trade Mark Office nor by the WIPO.

The most effective way to tackle the situation is to renunciate the Indian designation and refile the same as a national application in India without the ® symbol. You can read more about it at our blog here.

5. The Trade Marks Office has raised an objection regarding the priority claim but the same has been accepted in other countries – What to do?

Please note that under Indian law, partial priority or multiple priority claim is not possible. This means that it is not possible to claim priority only for certain classes or for certain specifications or from multiple priority applications. In such cases, it is always recommended to either withdraw the priority claim altogether and allow the application to proceed without priority, or to retain the priority claimed for the relevant classes and delete the other classes to subsequently file them as a national application. The request for withdrawal of priority claim can be filed directly with the Indian Trade Marks Office.

You can read more about it at our blog here. 

6. Can Amendment and Deletion/Renunciation requests be directly filed with the Indian Trade Marks Office?

Amendment requests, such as changes to the applicant’s name or address, as well as limitations to specifications, or deletion/renunciation of classes, are typically not accepted by the Indian Trade Marks Office. The request(s) needs to be filed with the WIPO directly. 

7. What happens if a third-party initiates cancellation/nullity action against the basic application?

Under the Madrid Application, there is always a dependency period of 5 years on the basic application. If the basic application is cancelled, revoked, or declared invalid within this 5-year period from the date of the international application, the entire international registration is cancelled and the protection granted in all countries till then also gets repudiated.

However, in such cases, the Applicant has the option to convert the international registration into national applications in the respective countries. The transformation needs to be done within the prescribed deadline with associated costs.

Thus, it is essential to manage international applications designating India in a smart, strategic and cost-effective manner. Rather than allowing an application to simply remain in the examination stage without further progress, taking proactive steps will ensure that your applications progress efficiently and effectively, ultimately safeguarding your brand in a timely manner.

Written by Keerthana K