“Please let us know the percentage of success/what you estimate the chances of overcoming the objection are…” I’ve been asked this several times over when companies/law firms are faced with objections from the Indian Trademark Office to their Madrid Protocol application.
Some clients are comfortable with a response that says there’s a “good chance” or a “fair chance” or “low chance” of overcoming the objection while some follow up seeking an actual percentage.
Across the firms, I’ve worked at, including until last year, at my own, I’ve always responded with a sort of guestimate. Years of filing replies and attending hearings before the Trademark Office does give us an inkling of how the Trademark Office might process a response/hearing but it was just that, an educated guess.
We decided to try and back this up with some actual numbers, and thus began a yearlong exercise of analysing how the Indian Trademark Office examines Madrid Protocol Applications, and processes responses to provisional refusals.
Our team, including several interns over the course of last year, examined the entire data of all applications filed designating India in the year 2019. Why 2019? Since it the trademark office was to examine all of them within 18 months and that ended up during the peak of the pandemic. So, with time until 2023, most of the applications should have gone through their entire prosecution cycle with the delays caused by the pandemic.
While the Madrid Monitor does provide the list of applications designating India for the year 2019, the team verified each of these applications, 13,247 in total, with the Indian trademark office records, including the replies which were filed, whether there were hearings, oppositions, rectifications and what follows is the culmination of that.
While now have several variables and have worked on a custom prediction tool, along the way we also found some interesting information, elements of which have been shared below.
I. Who are the Top Ten Countries filing Madrid Applications in India?
In the year 2019, there were a total of 13,247 trademark applications filed designating the Indian Trademark Office.
Out of the total applications, country-wise, the top filer of applications was the United States with 2,762 trademark applications followed by China with 2,231.
The top ten countries filing applications designating India have been listed below and it is interesting to note that the top ten filers constitute about 82 percent of the total applications filed in India that year. (10,923 Applications).
II. What fate have the Madrid Protocol Applications met with in India?
For a trademark to get through to registration it must clear the Trademark Office’s examiners and once it has been accepted and advertised, it needs to clear third party oppositions. Given that we cannot predict third party oppositions, we have focused more on the objections raised by the Trademark Office.
Though it’s been nearly four years since the applications were filed, not all of them have crossed the Trademark Office’s examination threshold. There are about 1837 applications which have been objected to and replies have been filed, hearings attended but they have neither been refused nor accepted. They’ve still been kept as pending/objected.
The chart above shows Rectifications, Marked for examination and Accepted as 0 as the values were very small. To be
clear, there are a total of 8 marks which have had rectifications filed, 1 application which remains to be marked for examination and 5 applications which have been accepted and are yet to be advertised.
As is evident, most of the applications have gone through to grant (9370 about 70% of the applications)
About 374 have been advertised and are pending registration, about 488 have been opposed and a total of 251applications have been refused registration being contested.
Finally 631 trademarks have been refused registration because the provisional refusal was not contested.
III. How does the Indian Trademark Office exam applications – strict or lenient?
Though 70 percent of all applications have ended up registered, some of that was after contesting the objections raised by the Trademark Office.
Out of the all the applications that were filed, 8830 application was examined and directly accepted by the Trademark Office.
For the remaining 4417 applications, the Trademark Office has raised objections to them proceeding.
As seen below, about 66 percent of the applications have been directly accepted by the Trademark Office without an
objection.
While the average rate appears to be 33 percent of the marks being objected to (upon the initial examination of the Office), it appears that some of the top ten filers (country wise) have a higher percentage of getting through a direct acceptance by the Trademark Office as seen below:
As seen above, applications from most of the top ten filers seem clustered around the average except for applications from the UK and Australia which seem to have only 57% and 56% of their applications directly being accepted (without a provisional refusal). China appears to have the highest direct acceptance rate of the top ten filers, with about 79% going through straight. Given that a majority of the applications from China are in Han characters, the Trademark Office relies on the transliteration and translation of these marks into English when examining them and that seems to have a bearing on the acceptance rates.
IV. How many applicants contest the objections raised by the Trademark Office?
With 34 percent of all applications filed being objected to by the Trademark Office, it is interesting to note that nearly 72 percent of those are contested by filing a formal reply to the provisional refusals
Though 72 percent of all objections are contested, it appears that Applicants from not all countries decide to contest in the same manner. Of the top 10 filers, some seem to want to contest the objections more than the others.
Most of the top ten are over or around the average, but in stark contrast, Applicants from China appear to contest only 42 percent of all provisional refusals received. The only other country that appears to challenge less than the average appears to be France, but that’s just a point or two below the average.
It is curious that China has the highest percentage of direct acceptance of the applications and yet contests less than half of the ones that are objected.
When India joined, the Madrid Protocol, there were several conversations around the effectiveness and whether filing nationally, claiming use of the mark etc. was more advantageous.
Initially, most lawyers, kept filing through the Protocol for clients and applicants who were testing waters, while the ones keen on protection went through national filings.
However, given that a sizable number of objections are contested, it is clear that most applicants have quite fully adopted the Protocol and are filing applications that they are quite serious about protecting.
V. On what grounds does the Trademark Office typically object to the applications?
The Trademark Office in India, when examining applications, national or through the Protocol, does so based on the
provisions of Sections 9 and 11 of the Trademarks Act. Broadly, Section 9 deals with absolute grounds of refusal (if a mark is descriptive, or name of geographic location etc) and Section 11 deals with relative grounds of refusal (if the mark is similar to prior registrations). Sometimes there are combination of both absolute and relative grounds of refusal and finally there are other objections.
We have categorized “other objections” for objections which weren’t on absolute or relative grounds. These included objections when the mark had the registered ® symbol on the device which needed to be removed, or if there were multiclass applications with different priorities or objections on the classification of goods.
Of the 4417 applications objected to, a majority, 46 percent of the objections were on absolute grounds.
VI. Contesting objections – Do applicants stand a chance of overcoming them?
Now that we’ve covered, the objections and the nature of objections, we were naturally curious to see how many of the
ones contested, actually managed to overcome the objections.
Typically, most applicants file a detailed response to the provisional refusal, and if the Trademark Office is still not convinced, appoints a hearing after which it either accepts or refuses or adjourns the hearing.
Though 4417 applications were objected, and 3189 replies were filed, there were 12 applications which were accepted and
advertised by the Trademark Office without any reply or contesting it (luck perhaps).
For the remainder of the applications as of January 2023, half have been accepted after contesting the objections on the basis of a reply or with a reply and a hearing.
Of the applications which have not yet been accepted a staggering 40% are still pending (after replies and hearings) still
waiting for the Trademark Office to make a decision. 8% of the total objected marks have been formally refused by the Trademark Office and 2% have been cancelled by the Applicant (IR Cancelled).
VII. Which hurdles are easier to get over?
With 50 percent of contested marks being allowed after a reply and a hearing, we next turned to understanding if the nature of refusal had a bearing on the chance of overcoming it.
It is quite clear from the chart above, that overcoming a refusal of “other objections” and “relative grounds is more likely with just a reply, while overcoming objections on “absolute grounds” requires a reply and a hearing.
This seems to be echoed by breakdown of the marks which were refused after a reply and hearing as well.
As seen below the majority of marks which were refused were initially objected to on “absolute grounds”. So overcoming such an objection on absolute grounds is definitely a bit more of a challenge than overcoming an objection on relative grounds.
So, what does this mean?
With these variables, we’ve put together a rudimentary tool to estimate chances of success. While we can rely on statistics a bit, ultimately each case is reviewed by a human (at present at least) and a decision on the fate of each application is subjective and depends on the hearing officer and several circumstances.
During this exercise though, we also reviewed and analysed the types of responses filed and the arguments made to contest the objections to see which of these are more effective. Does arguing dissimilarity or prior use, nature of evidence of use, citing case law, not citing case law have any bearing on the outcome.
If you would like to know any specific information on the report, the findings, or want additional analysis of a specific aspect, get in touch with us.
Author: Navarre Roy
Feature Image Credit – “The office” by jlcwalker is licensed under CC BY 2.0. To view a copy of this license, visit https://creativecommons.org/licenses/by/2.0/?ref=openverse.