What to do in case you receive Formalities Chk Fail (FCF) status or Keep Pending Notice (EKP)?

About Author:

Harshdeep Singh Narula, a practicing Company Secretary (CS) and Fellow member (FCS) of ICSI, brings over 5.5 years of expertise to the field. Specializing in Intellectual Property, Corporate Laws and Startup advisory, and is said to be a trusted advisor for businesses, ensuring compliance and success through his commitment to excellence and ethical practices.

You may reach out CS Harshdeep on: WhatsApp / Phone No.: 98780 67337, 82876 02186 or at Email: [email protected] , [email protected]

If you liked this article, then please leave feedback in the comment section or on the above email or WhatsApp at above no. Your feedback means a lot to the author. Thanks

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Introduction:

So, when do you file a Trademarks application, it goes through various checks like “Send to Vienna Codification”, “Formalties Chk Pass”, “Marked for Exam”, “Awaiting Reply to examination report” and out of those checks, one is Formalities Chk. When the application is not accurate in procedural aspects, then it might face the Formalities Chk Fail status.

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What do you mean by Formalities Chk Fail?

Formalities Chk Fail is a procedural step which is a part of your Trademarks application process. When you file a trademarks application, it certainly goes through various checks and steps, out of which Formalities Pass is one. This step is required, to make sure your application is drafted and filed correctly. To make sure that your application doesn’t have any discrepancies before it reached to the examiner, for further examination.

This step is usually a first step in case of a Word application and is a second step in case of Device application. For device applications, the first step is Send to Vienna codification.

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What do you mean by Keep Pending Notice?

So, Formalities Chk Fail notice is generated by the name of Keep Pending notice and it reflects on the Trademark status portal under tab “Correspondence & Notices”. That means, there is no difference between Keep Pending Notice and Formalities Chk Pass.

The reply to Keep Pending Notice should be filed within 30 days from the date of receipt of the letter, failing which the application shall be treated to have been abandoned for lack of prosecution under Section 132 of Trade Marks Act, 1999.

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What do you mean by Formalities Chk Pass?

So, after receiving Formalities Chk Fail and Keep Pending Notice, if you are able to satisfy and resolve the issue as marked in keep pending notice, then your application will be reviewed again and if there exist no issues, then your application will be marked to Formalities Chk Pass and will further mover to marked for exam status.

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What does Keep Pending Notice generally include?

In keep pending notice, you will generally find the suggestion/remarks from the registry to make certain changes in your application, by way of filing form TM-M.

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Is it necessary to file TM-M?

In keep pending notice, you will generally find the suggestion/remarks from the registry to make certain changes in your application, by way of filing form TM-M. However, if you believed that your application is filed correctly, then you do not have to file TM-M and you should explain this while filing reply to Keep Pending notice.

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Is filing a response to Keep Pending Notice will do the job?

Depends, if they are satisfied with your response to keep pending notice, then they will mark it to next step, however, if they are not satisfied then they will again mark your application as formalities chk fail and will again issue keep pending notice. In such cases, you can again file the response within 30 days. This process of Formalities Chk will keep on going, till you satisfy the examiner.

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What if the registry keeps issuing the Formalities Chk fail notice again and again?

In such cases, if you believe that your response is accurate, then you should keep fighting for it be replying to keep pending notice, however, if it doesn’t resolve, then you should make the desired changes by filing form TM-M.

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Does replying to Formalities Chk Fail means your application will get accepted?

Depends, because after filing reply to keep pending notice, if satisfied, then your application will move further to next step i.e. “Marked for exam”, after that step, you application might get accepted or examination report also might get issues.

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Let’s decode the whole process of Formalities Chk Fail with few examples:

Example 1:

Now, suppose that you filed a TM application for your private limited company and while filing the application you chose the status of applicant as others. So, in this case you will receive a Formalities Chk Fail report from the registry, to change the status of applicant by filing Form TM-M with requisite fee.

In such cases, what you have to do is, to prepare the Form TM-M for making the amendments in your Trademarks application and file the same along with fee. After filing, in few days your status of applicant type will be changed and your application will be forwarded for further examination.

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Example 2:

Now, suppose that you filed a TM application for goods which fall under multiple classes and which has no clear NICE classification explanation or which does not have a proper description explained on WIPO classification site and anywhere else. So, in this case you will receive a Formalities Chk Fail report from the registry, to make changes to your goods description as per your current class or to make changes to the class.

In such cases, what you have to do is, to prepare the Form TM-M for making the amendments in your Trademarks application and file the same along with fee. After filing, in few days your status of applicant type will be changed and your application will be forwarded for further examination

Further, Let’s say you that you believe that your goods description is accurate and so is your class, then you should file the response to Keep Pending notice explaining the matter and filing a response along with merits. If your merits are strong, then you do not have to make any changes and without filing TM-M your application will move ahead to next step i.e. “Marked for Exam”.

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Example 3:

Now, suppose that you filed a TM application for your private limited company and while filing the application you chose the status as Startup. However, if your company is not a Startup and you have not uploaded the startup recognition certificate, then registry will issue Keep pending notice, either to upload the certificate or to pay the balance fee i.e. 4500/-. As, Startups get 50% rebate while filing the application.?

In such cases, what you have to do is, if you have Startup Recognition certificate, then you should upload it, else file the balance fee of 4500/-.

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Example 4:

Now, suppose that you filed a TM application for your Company, and in Name of Applicant column, you filed the name of Director of the Company.? So, in this case you will receive a Formalities Chk Fail report from the registry, to change the name of applicant by filing Form TM-M with requisite fee.

In such cases, what you have to do is, to prepare the Form TM-M for making the amendments in your Trademarks application and file the same along with fee. After filing, in few days your status of applicant type will be changed and your application will be forwarded for further examination.

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Some frequently asked questions from my clients:

Q1. What is the Fee for making changes in Formalities Chk Fail / keep Pending Notice?

A1. The government fee for filing form TM-M is Rs 900/- for desired change.

Q2. Is any other Government Fee involved for making changes in Formalities Chk Fail / keep Pending Notice?

A2. Depends, in case you have received a remark to make multiple changes in your application, then government fee for filing each form TM-M is Rs 900/-.

Suppose you have received remark to make two changes in your application, then you have to file two TM-M with 900/- fee for each TM-M making it a total of Rs. 1800/-.

Q3. What is the professional fee for making changes in Formalities Chk Fail / keep Pending Notice?

A3. Professional charges for drafting and filing form TM-M and filing reply to keep pending notice varies from professional to professional. You should consult multiple professionals before moving ahead with assignment.

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Q4. Is any other fee involved apart from government and professional fee for making changes in Formalities Chk Fail / keep Pending Notice?

A4. Depends, if after filing reply to keep pending notice and after your application moves to further process it receives examination report, then charges for preparation and filing reply to examination report shall be different.

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In case you have any other queries regards Trademarks procedure, then please feel free to contact the author.

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About Author:

Harshdeep Singh Narula, a practicing Company Secretary (CS) and Fellow member (FCS) of ICSI, brings over 5.5 years of expertise to the field. Specializing in Intellectual Property, Corporate Laws and Startup advisory, and is said to be a trusted advisor for businesses, ensuring compliance and success through his commitment to excellence and ethical practices.

You may reach out CS Harshdeep on: WhatsApp / Phone No.: 98780 67337, 82876 02186 or at Email: [email protected] , [email protected]

If you liked this article, then please leave feedback on the above email or WhatsApp at above no. Your feedback means a lot to the author. Thanks