How to contest an International Trademark Provisional Refusal in India?

International Trademark Provisional Refusal in India

India is a part of Madrid Protocol system, so International trademark applications designating India are treated on par with locally filed trademark application.

All international trademark applications undergo normal examination at the trademarks registry and are therefore checked for conflict with already registered and pending marks. In case an identical or similar trademark has been registered or has been filed with a prior date then the international trademark would receive a provisional refusal.

To acquire trademarks protection in India, the applicants MUST respond to the notification of provisional refusal of their mark within ONE MONTH of the said refusal.

How much does it cost to contest the refusal?

Reason for provisional refusal of an International Trademark in India

  • The refusal is often under Section 9(1) (a) of the Trade Marks Act 1999, if the mark is descriptive or non-distinctive as such that it is not capable of distinguishing the goods and services of one business from others, or is something that indicates kind, quality, quantity, intended purpose, values, geographical origin of the product.
  • The refusal is also often under Section 11 (1) of the Trade Marks Act, 1999, if the mark is identical with or similar to earlier marks in respect of identical or similar goods and services, and due to this there exists a likelihood of confusion on the part of the public.

Responding to the Provisional refusal in India

A notice of refusal is usually accompanied by a list of conflicting marks. We shall study the conflicting marks cited by the Indian Trademarks office for issuing a provisional refusal of the mark and then file our proper response to overcome the objections. This response needs to be filed within ONE month of the date of communication of the refusal to the applicant. We shall also go through the conflicting marks and offer our opinion on the possibility of successful registration of the mark.

The usual procedure is:

  • We must file a response to the provisional refusal within ONE month of the date of WIPO notification.
  • The trademark registry invites us for further clarification and provide our arguments to overcome further objections.
  • We can seek a personal hearing with the examiner and provide documentary evidences to support our arguments.

Attorney fee for International Trademark Provisional Refusal in India

Action based fee

  • Attorney fee for preparing and filing of the response to the refusal notice
  • Additional fee for responding to office actions
  • Additional fee for preparing evidences and arguments
  • Additional fee for attending hearings with the examiner

Capped Flat fee

  • Attorney fee for preparing and filing of the response to the refusal notice
  • No further fee for responding to office actions
  • No further fee for preparing evidences and arguments
  • No further fee for attending hearings with the examiner
Click here: Fee for INDIAN applicants in Rupees.

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This article has been written by

Trademark attorney in India

I, Mahesh Bhagnari, am the Managing Principal of the firm:

  • I am an Attorney at Law with Bar Council Registration № MAH/1574/2003.
  • I am licensed to practice at the Intellectual Property Office as a Patent attorney in India and Design attorney in India with Registration № IN PA 1108.
  • I am licensed to practice as a Trademark attorney in India with Registration № 10742.
  • I have more than eighteen years of professional experience working in the field of Intellectual property.
Trademark attorney in India

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