If an objection is made during the examination process of the trademark application or an opposition by a third party is received after publication, the Registry will communicate a provisional refusal to the International Bureau of WIPO. The Registry also considers the response to provisional refusals and processes it as per Trade Marks Act & Rules. The International Bureau provides the details of such provisional refusal to the applicant and records the provisional refusal in the International Register along with the date on which the notification was sent. Next, it is published in the WIPO Gazette, with an indication as to whether the refusal is a total refusal or a partial refusal. A total refusal relates to all the goods and services covered by the designation and a partial refusal relates to only some of those goods and and services covered. After completion of all the procedures, the Registry will either withdraw the provisional refusal or confirm the same fully or partly and shall give protection to the international registration in India accordingly and shall send the notification to the International Bureau to that effect.

On examination by the Registry, the application for registration of international trademark in India may be refused on either absolute or relative grounds. Objections can be raised under Section 9(1) (a) if the trademark lacks distinctiveness or under Section 11(1) , if the trademark is similar to pre-existing trademarks registered in that territory. For example, a T-shirt company incorporated in United Kingdom named “Zealous” applies for an international trademark, designating India as one of the parties. On examination by the Trademark Registry of India, it may arise that the term “Zealous” lacks distinctiveness and various other companies belonging to the same class, exist and trade in India under similar trademarks eg. Zelus, ZLS, etc. The Registry then notifies the International Bureau of the WIPO of the provisional refusal under Section 9 (1) (a) and Section 11 (1) of the Trademarks Act. The International Bureau will then record the provisional refusal and communicate the same to the applicant.

In this case, the applicant (Zealous) has to respond to the objections made within a month from the date of receipt of the notification of provisional refusal. Even though the deadline to file a reply is one month from the date of receipt, the applicant can file an application for an extension of the deadline, prior to the deadline expiring. If no response is filed or in case no extension request is filed, the provisional refusal shall be confirmed. In order to secure more assistance in the process, it is beneficial for the applicant to execute a Power of attorney in favour of a trademark attorney having address in India via Form TM-48. In order to overcome the objection of provisional refusal, the applicant can show how the trademark has been in usage in India and has acquired distinctiveness.

In India, trademarks in prior use enjoy greater protection as compared to trademarks that have been registered first. Courts in India have adopted a broad perspective of the term ‘usage of a mark in India’ to include trans- border reputation, Indian users accessing website with trademark available and presence of advertisements containing trademark in international publications circulated in India. There is no explicit provision for claiming usage for an international trademark in India under the Madrid Protocol.

Given the importance accorded to the usage of a trademark in India, the applicant must prepare a detailed reply to the provisional refusal contesting all the objections made, relevant judicial precedents and documentary proof supporting the usage claims. In order to overcome the provisional refusal, the applicant also has the option of amending his application by deleting goods or services or by limiting the scope of registration. Any changes or amendments must be notified to the International Bureau of WIPO. If a hearing is required, show cause hearing is fixed and facilitated by the designated officer. If the application for international trademark is approved by the Registry, it is then published in the Trademarks Journal.