FAQs TradeMark laws and provisional denial in India

Section 36E of the Trademark Act, 1999 provides for the procedure to be followed by the Registrar upon receipt of an advice from the International Bureau about any IRD (International Registration Designating India). The Registrar is required to keep a record of the particulars of that international registration in the prescribed manner.

If the Registrar finds that the trademark which is the subject of an international registration designating India cannot be protected, he shall, before the expiry of refusal period as applicable under Article 5 of the Madrid Protocol, notify the International Bureau of a provisional refusal against trademark protection in the prescribed manner. The reasons for trademark rejection are provided in the provisional refusal examination report. This report is sent to the International Bureau and the applicant of the international registration, who then has an opportunity to respond to the grounds of refusal raised in the report.

The advice as referred above is examined ordinarily within a period of two months from the date of receipt of advice received from the International Bureau.

Grounds on which the Registrar Issues Provisional Refusal against Trademark

In the Provisional Refusal, the Registrar objects the trademark application as if such international registration was an application for registration of a trade mark in India. The grounds of trademark refusal as enumerated under Sections 9 and 21 (both inclusive), 63 and 74 applies in relation to an international registration in the same manner as if the trademark was filed in India.

Where there are no grounds for trademark refusal to grant protection, the Registrar shall advertise the particulars concerning international registration under section 20 of the Act in a separate part of the trademarks Journal ordinarily within a period of six months from the date of receipt of advice.

Responding to IRDI Provisional Refusal of Trademark

While responding to provisional refusal of trademark, the applicant will file response to provisional refusal in a manner similar to filing reply to office action against a trademark application filed in India. In general, the Attorney drafts the reply to provisional refusal to overcome the objections as enumerated in the provisional refusal. To file response to provisional refusal, information/documents will be sought from the applicant so that the same can be mentioned in the response to Provisional Refusal

In view of Trade Marks Registry advice in respect of Madrid applications, the Registry now requires the address for service in India has to be recorded in respect of trademark applications, hence a request is to be filed with the Registry to appear as the Attorney on record in respect of an international application with the Trade Marks Registry for submitting a response to the provisional refusal for an IRDI application

Official fee for filing the request to appear as the Attorney on record in respect of the captioned application with the Trade Marks Registry is given below.

Deadline for filing the response to Provisional Refusal

The International bureau (WIPO) notifies the agent by email and the date of notification will be considered as date of receipt of provisional refusal by the holder. Therefore, the Reply to provisional refusal is to be filed within 30 days from the date receipt of the notification

*The above fee does not include the professional fee for drafting reply to provisional refusal.