Scrutiny Report or Discrepancy Notice
By filing a Trademark Application in the Registry, Registration of Trademark is being done. After registration if any changes are to be made, an application is given to the Trademark office. This application is to be given along with the supporting documents or forms to the Trademark office. If the Trademark office needs any additional clarification regarding the submitted documents then they issue a notice with the details of the deficiency. This notice is usually called a Scrutiny report of Discrepancy Notice that is issued to address services.
For eg. If someone has filed an application for Transfer of Trademark application, and if the registry wants more clarity in it then they will issue a discrepancy notice to the agent/ attorney of the applicant asking required documents on the same.
The Trademark Act, 1999 and the corresponding Trademark Rules, 2017 provides details and rules for the filing of an application to the Trademark office. After filing the applications, scrutiny takes place to check if they are as per the ac and rules. Upon finding any deficiencies regarding the compliance, the Trademark office issues the scrutiny report or discrepancy notice.
- Instances of Scrutiny Report of Discrepancy Notice
- Effects of Scrutiny Report or Discrepancy Notice
Instances of Scrutiny Report of Discrepancy Notice
There are several instances which provide for issuing of a scrutiny report or discrepancy notice. They are as follows-
- Deficiency in Payment of the Fees for Forms
The Act prescribes filing applications to the Trademark office for various purposes like registration, transmission, assignment etc. the rules provide the list of applications along side fees to file before the Trademark office. The Trademark office issues discrepancy notice to the applicant upon finding any deficiency in payment of the fees prescribed for the appliance .
- Assignment of Trademarks
Assignment of Trademark is done by the proprietor to another person. For assignment of Trademark an application along with NOC of the owner of Trademark is to be submitted to the Trademark registry along with required documents. When the registrar of Trademarks has doubts about the genuineness of these documents, he requires additional proof of such assignment. In such a case Trademark office issues a scrutiny report or discrepancy notice to the person to whom Trademark is assigned.
- Transmission of Trademarks
When the transmission of Trademark takes place between one person to another, an application is filed before the Trademark office. This application is to be filed along with the required documents, if the Registrar of Trademark has any doubt pertaining to the correctness of the documents, he issues a scrutiny report or discrepancy notice to the person to whom Trademark is transmitted.
- Alteration in Address or Goods in the Register
When the proprietor makes a change in the address of the proprietor in the application, then he has to move an application before the Registrar for the same. Upon satisfaction of the correctness of application, he shall change the address. If he requires any additional clarification or documents for an equivalent , he issues a scrutiny report or discrepancy notice to the proprietor.
Effects of scrutiny Report of Discrepancy Notice
The Trademark office can issue the notice at any stage where deficiencies arise. When a person receives the notice, he has to reply to it addressing the deficiency usually within 30 days of the receipt of notice. Responding to the notice within the time given in the notice is essential. If reply is not given in the prescribed period then the notice given may get rejected. If notice is received, it is advisable to consult an expert for assistance.
There are two very general questions that are being asked very often and they are as follows-
- Is the issuance of the notice a mandatory stage of Trademark prosecution in India?
Scrutiny reports or discrepancy notices are not inevitable but are probable during the Trademark prosecution in India as any Trademark application is filed, if any deficiency is there in the application then scrutiny report or discrepancy notice is being issued.
- Is it possible to get notice even after registration of the mark?
Yes, any application that is filed before the Trademark office is being scrutinized even after the registration of Trademark, and if any deficiency is found in the application, notice is being sent.
For eg. An application for change of proprietor address is being filed after the mark being registered, and if any deficiency is found according to the Trademark Act or rules, then scrutiny report or discrepancy notice will be issued to the proprietor.
Therefore it is always advisable to involve experts to avoid the risk of such notices to come.