Trademark Status: Advertised before Accepted — Meaning and Next Steps

Short answer: Advertised before Accepted means the Registrar has published the application in the Trade Marks Journal before formally accepting it, under the proviso to Section 20(1) of the Trade Marks Act, 1999. The mark is not registered yet. For four months from the Journal date, anyone can oppose it. Even if nobody does, the application still has to be accepted before the mark can be registered.

Why your application shows this status

Normally an application is examined, accepted and only then advertised. The proviso to Section 20(1) lets the Registrar advertise before acceptance if the mark is one to which Section 9(1) (absolute grounds, such as lack of distinctive character) and Section 11(1)-(2) (conflict with earlier marks) apply, or in any other case where exceptional circumstances make it expedient. Third parties can then raise objections through opposition before acceptance is decided. In practice the status usually appears after examination or a show cause hearing.

What happens next

• The application is open to opposition for four months from the date of the Trade Marks Journal in which it appears (Section 21(1); Rule 42, Form TM-O).
• If someone opposes, the Registrar serves a copy of the notice of opposition and the status usually changes to Opposed. A counter-statement on Form TM-O must be filed within two months of receiving it, or the application is deemed abandoned (Section 21(2); Rule 44).
• If no opposition is filed, the application still has to be accepted and then registered under Section 23(1). How long this takes depends on Registry workload.
• After acceptance, the Registrar may in his discretion advertise the application again (Section 20(2)(a)); a re-advertisement starts a fresh four-month opposition period (Section 21(1)).
• If an error is corrected or the application is amended after advertisement, the Registrar may re-advertise it or publish a notice of the correction instead (Section 20(2)(b); Rule 40).

What to do now

• Note the Journal number and date shown on the e-register and work out when the four-month opposition window ends.
• Check the Journal entry carefully: mark, class, goods or services, applicant name, user date and any conditions or limitations. An error can be put right by a request on Form TM-M (Rule 37).
• Check the documents on file (examination report, hearing notice or order) for the reason the mark was advertised before acceptance, so the same point can be answered if an opposition raises it.
• Keep the address for service and email on record current and watch for an opposition notice; the two-month counter-statement period runs from receipt.
• Keep dated evidence of use of the mark (invoices, advertisements, website records) ready in case it is needed in an opposition.

Common mistakes

• Treating it as registration. The mark is not registered, and representing it as registered (® or the word "registered") breaches Section 107 and attracts a monetary penalty.
• Assuming it is the same as Accepted & Advertised. Here the Journal publication has come before acceptance.
• Assuming registration is automatic once four months pass. Section 23(1) provides for registration of an application that has been accepted.
• Ignoring Registry emails during the opposition window. Missing the two-month counter-statement deadline means the application is deemed abandoned.

For every other status and what it means, see the trademark status guide.