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Monday, June 22, 2015

Notice of Provisional Refusal by Indian Trade marks Registry

Since last few months Indian Trade marks Registry has commenced examination of Madrid Registration designating India. Where the Registry has any objection to the Trademark a  provisional refusal report is issued by IRDI Section and forwarded to WIPO and then WIPO notifies the Right Holder. The registry normally issues the notice of provisional refusal to WIPO within a week of issuance of same and within 15 days of receipt WIPO dispatches the notice to right holder vide registered mail.

The deadline to respond to provisional refusal is one month from the date of receipt of notice of provisional refusal by the Holder or his legal representative. The response to provisional refusal is required to be filed through an Agent (either a Trademark Agent or an Advocate) or through a representative, having address within territory of India.

A response to provisional refusal or request for reconsideration of provisional refusal, evidence in support of prior use of Trademark in India by way of Owner's Affidavit, or limiting the scope of protection or a request for hearing can be sought the Agent/ Attorney/ Representative.

Unlike the typical examination reports issued to Applicants in India, the notice of provisional refusal by Trademark Registry also provides in detail the essential provision under the Indian Trademarks Act as well as information relating to subsequent procedure.

Overall Madrid system is advantageous as Indian Trade Marks registry is not levying extra fee per additional character where description exceeds 500 characters (excluding space), though those who file Application with Indian Trade Marks registry have to pay such fee. Further, it is unclear if similarly any objection as to requirement of association would be raised by the Trade Marks registry, where right holder is also applicant/ registered proprietor of an earlier mark.

Above practices of subjecting the Indian Applicant to extra fee, clearly amounts to discrimination by Trade Marks Registry and accordingly the Sub Rule 16 of Rule 25 of the Trademark Rules, 2002 is liable to be struck down.

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