Notice U/s 132 of Trademark Registration Act, 1999 in respect of TM Application Examination Report  

During Trademark Registration process Applicants may receive an examination report raised by the Trademark officer by assessing whether it complies with the provisions of the Trade Marks Act, 1999 and the Trade Marks Rules. 

INTRODUCTION:    

The Examination report explains about the objection raised, giving the applicants an opportunity to file a reply within the prescribed time to proceed with registration. If the reply by the Applicant not complied, the Trademark registrar shall ABANDONED the Application u/s 132 of Trademark Registration Act, 1999

Reasons for Examination Report Notices:

     The Notices basically generated based on seeking clarifications from the Applicant and officer verifies whether application is completely filed. if not,

ü  If there is any incomplete documents and correct the clerical error, to be complied

ü  If the mark is descriptive , u/s:9 (1)(a)

ü  If the mark is  non-distinctive, u/s:9 (1)(b)

ü  If the mark is deceptive, or contrary to law or morality, u/s:9 (2)(d)

ü  If the mark is similar to the existing  or prior  Trademark owner , u/s :11 (1)  

ü  If the  classification of goods and description are vague

 Therefore, with the notice raised by the Trademark officer, the Applicant need to comply the response relevant with the issue raised within 30 days from the date of the examination report generated.

Response to the Examination Report

   The Applicant need to review the examination report issued and draft a written statement through a expert Advocate/ TM Agent addressing all the legal section raised along with  reason why the brand  need to be accepted and objection need to be waived .Once the written statement  is prepared , the reply response to be filed in  IP Trademark filing portal. Where the Application will be assigned to the TM officer for the scrutiny and will be moved to the further registration process

    The Application may be moved to 

                                               ü  Acceptance

                                                           (Or)

                                                ü  Ready for  show cause hearing

Reasons for ABANDONEDMENT of Trademark Application 

      The ABANDONEDMENT of a Trademark Application processed for various reason by the Trademark Registrar, as such

ü  Where  the Applicant fails response to the  Examination report  within stimulated time limit of 30 days

ü  When the Applicant / Opponent  fails to  comply the counter / Evidences with stimulated time limit of  60 days

ü  When the Applicant fails to comply any incomplete the documents  raised through a report  within stimulated time limit of 30 days

ü  If any Third-party ,  files a petition  with a valid request and reply is not complied by the Applicant within stimulated time limit

At this stage, the Trademark Registrar will issue a notice u/s 132 of Trademark Registration Act, 1999

What is Section 132 of the Trade Marks Act, 1999?

  The Section allows the Trademark Registrars / legal officer to take legal actions against the pending Application on good Faith.   Where the section allows/ grant right to the officer to send a notice u/r: 132  of Trademark Rules,2017

Section: 132 of Indian Trademark Act, 1999

“Where, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act or any Act relating to trade marks in force prior to the commencement of this Act, the Registrar may, by notice require the applicant to remedy the default within a time specified and after giving him, if so, desired, an opportunity of being heard, treat the application as abandoned, unless the default is remedied within the time specified in the notice.”

Rule 132 of the Indian Trade Marks Rules, 2017, read with Section 132 of the Trade Marks Act, 1999, deals with the ABANDONEDMENT of trademark applications

ü The section allows Trademark Registrar to act in good faith for taking legal proceedings against the pending  Trademark Application

ü The office issues a letter /mail to the Applicant /Attorney as a final opportunity to respond to the pending examination report / notices raised by the Trademark officer.

ü The letter /mail issued by the officer will give the timeline and instruction when and how the response to be filed.

If the reply is not filed or the instruction neither followed, the Trademark Registrar will issue the notice under Rule 132 of the Indian Trade Marks Rules, 2017. Where the status of the Application will be ABANDONED. Thus the Application will not be moved further.

 Conclusion:

         Before Registration the mark will go for various scrutiny and challenges. The Applicant must be aware and caution about filing and addressing the issues/notices raised by the Trademark office. As, the protecting of Trademark for the brand name is crucial for any kind of businesses. On time response and compliances of documents will avoid unnecessary rejection / Abandonment of the Trademark