This article is written by Satyaki Deb, a LL.M. (IP) candidate from the Rajiv Gandhi School of Intellectual Property Law, IIT Kharagpur. This article provides an exhaustive overview of how one can check trademark status online by following some simple steps and its related concepts that will help you along such a process.
This article has been published by Sneha Mahawar.
Table of Contents
Introduction
In the fast-evolving world of intellectual property rights, a trademark or brand name (in layman’s language) is something that can build a business to new heights if utilised properly. On the contrary, if a trademark is not properly registered or protected or you do not know how to check the status of your trademark online with some simple steps, it may lead to loads of legal hassles in the future at the cost of your business. At the outset, it is pertinent to mention that before a trademark application is filed, one is generally advised to do a thorough trademark search first to see legally if it is worth going ahead with filing your trademark application. If you are advised to proceed with the trademark application with or without modifications, you or your agent/attorney will file your trademark application. Thus, instead of jumping headfirst into how to check the status of a trademark online, for the sake of convenience of the readers, as far as practicable, attempts will be made to demonstrate briefly how to do a trademark search, how a trademark application can be filed in India and then how to check its status online in a step by step guide.
What is a trademark search
Even though a comprehensive picture of what a trademark is, its types, etc. is beyond the scope of this article, briefly speaking, a trademark as defined under Section 2(1)(viii)(zb) under The Trade Marks Act, 1999, is basically a mark to distinguish between the goods and/or services of two persons, where a mark can range from “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof” vide Section 2(1)(i)(V)(m) of the Trade Marks Act, 1999. Logically, it can be easily inferred from this that it is always best to have a unique trademark. The more similar your trademark gets to people offering similar goods and/or services, the more legal problems are likely to crop up from time to time. Herein, comes the importance of doing a thorough trademark search before finally deciding on your trademark.
Now, you have a business and you want to have a trademark of your own. You should do a trademark search first, and let us study how to do that with a brief example. For example : I am offering legal services in IP as an IP attorney, and I want to trademark the name of my IP legal business after my own name as ‘Satyaki Legal’. The steps to be followed are enumerated briefly as follows:
Step 1: Go to ipindia website > click on Trade Marks > Click on Public Search. Your screen is going to look something like the below picture.
Step 2: Now if your desired trademark is a text-only trademark, click on ‘Wordmark’ from the ‘Search Type’ bar as indicated above. If you want to check based on ‘Phonetic’ elements of your desired trademark, i.e. its pronunciations, or if you want to search as per the Vienna Code, click on the respective options. Since the most popular or first choice of search is usually a wordmark, we will go ahead with ‘Wordmark’ in this example.
Step 3: As you can see in the below picture, I chose to search with my name to see if I can trademark any legal services in my name. Legal Services fall under Class 45 (Nice Class) and if you are not aware of the class details of your goods and/or services, you can easily find it from the Class Details tab as seen in the top left of the picture. Click on ‘Search’ thereafter.
Step 4: The picture below will show what my search report looked like. Click on ‘Show Details’ to see more on the individual search results. But kindly keep in mind that the below picture is just one search result from the Indian Trade Mark Registry. A thorough trade mark search report from an IP attorney will have more comprehensive coverage with suggestions for modifications if necessary.
How to file a trademark application in India
Now that we have seen briefly how to do a trademark search, we will see how to file a trademark application in India in a few short steps. Since this step is recommended to be done by the agents and/or lawyers and this in itself warrants a comprehensive discussion, for the sake of brevity and sticking to the main title of this article, the steps will be shown in a generic way. The steps are as follows:
Step 1: From the ipindia website’s trademark page, go to ‘Comprehensive e-filing Services’ under the ‘Related’ tab. If you are an existing user, login using your credentials, or if you are a new user, register here. If necessary, use the user manual for guidance during new registration. The login page will be somewhat as below:
Step 2: Click on this link here to access the pdf which will show you clear instructions on the next steps on how you can file your trademark application after logging in to the above-mentioned portal.
Importance of checking trademark status online
Now that we have briefly seen the first two steps that are generally done before checking the status of a trademark application online, it is time to understand its significance of it. In other words, one should know why checking trademark status should not be missed. They are stated as follows:
- Timely action with regards to the applications or registrations related to submitted documents can only be ensured with periodic checking of trademark status online. Missing out on deadlines with respect to actions to be taken may cost one a lot of time, money and legal hassles.
- It is advisable to check the status of one’s application at least every six months from the date of application till issuance of registration, during the pendency of the application and after the grant of registration, every six months to check for any requirements of submission of post-registration documents, pending fees, or any requirements of maintenance filings, etc. Maintenance filings are usually necessary in the 5th or 6th year after registration, and one’s trademark stands to be cancelled if a maintenance affidavit is not duly filed.
- If one fails to keep a tab periodically on the status of the trademark, there is a possibility of misuse by unscrupulous entities. Only by routine checking of status and thorough searches can unauthorised uses be challenged in a timely fashion.
Thus, as demonstrated above, periodic checking of trademark status is extremely important to ensure due compliance with all rules and regulations in a timely manner. Any slack in this aspect may cost your business heavily.
How to check trademark status online in India
Now that we have briefly seen the significance of checking the status of a trademark online, it is time to see the steps by which you will be able to do it. They are mentioned as follows:
Step 1: The first step to check the status of a trademark online is to visit IP India’s trademark status webpage, which is the official Government of India’s website in this regard. This option is available under the ‘Related Links’ tab of the Trade Marks tab in the IP India website. The trademark status webpage looks somewhat like the below picture. Click on the circled tab stating ‘Trade Mark Application / Registered Mark’.
Step 2: After clicking on the ‘Trade Mark Application/Registered Mark’, the webpage will look somewhat like the below picture.
Step 3: Click on the circular checkbox of the National/IRDI Number (as shown in the above picture) as your next step in this regard.
Step 4: As soon as you click on the National/IRDI Number, your webpage will look something as below:
Step 5: As you can see in the above image, there are two blank spaces to be filled. Fill up the trademark or application number and verify the captcha given. Thereafter, click on ‘View’.
Step 6: The picture below is an example of how your screen will look after you have successfully entered your trademark or application number and verified the given captcha.
Thus, these are the simple steps in which one can check trademark status online. But as you can see in the above picture, the status of the trademark is ‘objected’. What does this mean legally? What other statuses may be there after you check the status of your trademark? They have been discussed under the next heading.
Various results from the checking of trademark status online
Now, you have seen how to check the trademark status online in a step-by-step guide. As a corollary step, it is highly advisable that you understand the legal significance of the terms that your trademark status check may show. These terms are discussed briefly as below:
New Application
This is the first step in the process of a trademark application. So, what this step means is that your application is now within the Trade Mark Registry’s database and will be processed soon.
Send to Vienna Codification
In cases where the trademark is non-text in nature, that is, when the trademark consists of some artwork, logo, label, etc., then such trademark applications will be sorted and codified as per the Vienna Classification.
Formalities check pass
You can be really happy when you see this because this means that your trademark application has fulfilled all the necessary formalities required in this regard. Here, procedural formalities that when fulfilled give you this ‘formalities check pass’ status. Usually, these ‘formalities’ constitute the power of attorney, translations into English or Hindi where the original document is not in English or Hindi, etc. In other words, this status is a testament to your complete compliance with all procedural formalities.
Formalities check fail
You do need to worry by looking at the word ‘fail’. This status simply means you have missed out on some procedural requirements or your compliances are not satisfactory enough. In this case, you just need to file an amendment form to correct your mistakes and fully comply with all the procedural requirements of the Trade Mark Registry.
Send back to EDP
EDP is the acronym for ‘Electronic Data Processing’. Since all trademark applications are filed digitally these days, all the related documents and data entry need to be digitised too. So, what this means is that some errors have occurred at the end of the Trade Mark Registry during the data entry process and they require correction. There is no need for you to take any action regarding this status.
Send to PRAS
PRAS stands for ‘Pre Registration Amendment Section’. So, this status basically deals with any amendment form that you have filed before your trademark registration.
Marked for exam
This means that the legal process is starting and your trademark application is about to be thoroughly examined by an examiner at the Trade Mark Registry. The examiner will decide the registrability of your trademark application based on the provisions of the Trade Marks Act, 1999.
Exam report issued
As the name suggests, this means that the examiner has finished examining your trademark application and has issued an examination report in this regard. The exam report may show acceptance of your application or may contain objections for refusal of a trademark based on Section 9 and Section 11 of the Trade Marks Act, 1999.
Objected
This status means that the Trade Mark Registry has found some grounds to refuse the registration of your trademark. You will have to reply to the raised objections within one month from the date of receipt of a hard copy of the notice of such objection from the registry.
Abandoned
This status means that you have failed to reply to the Trade Mark Registrar within the stipulated time frame of the notice served on you. So, your trademark application has been marked as ‘abandoned’ owing to your failure to comply with the notice against you in a timely manner.
Accepted
This means that your trademark application has been accepted and is about to be published in the trademark journal before registration.
Advertised before accepted
This status means that your trademark application is yet to be accepted for registration and has been published in the trademark journal for the purpose of inviting objections from third parties.
Accepted and advertised
This status means that your trademark application has been accepted by the Trade Mark Registry as it is and has been published in the trademark journal. There are no further steps to be taken by you except periodic checking of its status.
Ready for show cause hearing
This status means that the examiner of your trademark application is not satisfied with the response you have filed against the objection notice served against you. You need to timely appear before the examiner and explain why your trademark application warrants no rejection. Failure to comply with this status in a timely and precise manner may lead to ‘abandoned’ or ‘rejected’ status of your trademark application. So, due care and caution need to be exercised with respect to this status.
Refused
This means that your response to the objections of the Trade Mark Registry or third parties is not satisfactory in the eyes of the examiner of your trademark application. So, he has refused to register your trademark.
Opposed
This means that a third party has filed an opposition against your trademark application. Any third party can oppose your trademark application by paying the requisite fees and filling out the due form (Form TM-O) within four months of the advertisement of your trademark application in the trademark journal.
Registered
This status means that your trademark is now successfully registered with the Indian Trade Mark Registry.
Removed
This means that your trademark has been removed from the Trade Mark Registry database. Usually, this happens when you fail to renew your trademark in a timely manner.
Withdrawn
This status means that you have voluntarily withdrawn your trademark application.
Conclusion
Trade mark litigation constitutes the bulk of intellectual property litigation in India. One of the major reasons that businesses face legal hassles with respect to trademarks is their failure to check trademark status online in a periodic manner. There is a common misconception among businessmen that once a trademark is registered, nothing needs to be done for 10 years. This false notion may cost a business heavily and one of the prime remedies in this regard is to keep checking the trademark status online in a periodic manner in the above-mentioned ways and take prompt due actions as per the status.
References
- https://ipindia.gov.in/trade-marks.htm
- https://ipindiaonline.gov.in/eregister/eregister.aspx
- https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf
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