Trademarks help protect the brand’s identity and reputation in the market. Additionally, if a trademark is registered, it gives the owner exclusive rights over a particular name, logo, symbol, etc., and legal protection against its infringement. However, there are instances when a trademark faces objections from the examiner during the registration process.
In such a case, it becomes necessary to understand how to respond to such objections effectively. In this blog, we will discuss the common reasons for trademark objections and how you can file a reply if such objections are raised. Moreover, we will learn the difference between trademark objection and trademark opposition.
First, let us understand the meaning of trademarks and the laws governing trademark registration in India.
What is a Trademark?
Knowing what a “mark” means is crucial when talking about trademarks. In trademark law, a “mark” is a wide term that includes different things like logos, brands, labels, names, and more.
Therefore, a trademark is something that can be shown visually and sets apart one person’s products or services from others. It can include the shape of products, how they’re packaged, and the mix of colors used.
Some examples of popular trademarks include Nike’s Swoosh logo, Apple Inc.’s bitten apple logo, Coca-Cola’s curved design bottle, etc.
Registration of Trademark
In India, the Trade Marks Act, of 1999 governs trademark registration. However, it is not compulsory to register a trademark, it is always advisable to obtain the registration as it gives the owner exclusive rights over the mark and protection against infringement.
Meaning of Trademark Objection Reply
A trademark application goes through various stages before a trademark is successfully registered. In the initial stage only, after an application is filed, the trademark examiner checks if there are any inaccuracies in the application. Therefore, once the application is examined by the trademark office, there can be two possibilities –
- There is no inaccuracy in the application – In such a case, the examiner accepts the application and processes it for publication in the Trademark Journal.
- There is/are inaccuracies in the application – In this case, an examination report is issued to the applicant outlining the inaccuracies in the application and the objections raised by the examiner on various grounds as listed in the Trade Marks Act, 1999.
In the second scenario, the applicant is required to submit a reply to the examination report. In the reply, the applicant should give reasons along with supporting documents, why the objections raised should be waived off and the application should be processed further for registration. This process is known as trademark objection reply.
Moreover, the applicant shall file the reply within one month from the date of receipt of the examination report.
An examination report is a report that is produced after the proper examination of the trademark application.
Decisions about trademark objections depend on the information in the trademark examination report. This report is like the starting point for checking the trademark application. It helps find any problems or objections and figures out if the application follows the Trademarks Act, of 1999.
It’s really important to respond well to the objections and deal with the issues in the examination report. This is key to getting past the trademark objection and continuing with the registration process.
Reasons for Trademark Objection
Section 9 and 11 of the Trade Marks Act, 1999 provides the absolute and relative grounds based on which the trademark examiner can raise objection(s)/. Generally, the following are the common reasons why trademark objection(s) is/are raised –
- Already Existing Trademark – This is the most common reason for objecting to a trademark application. This objection is raised when the proposed trademark is similar or identical to an already registered trademark. The intention behind this objection is to avoid confusion amongst the public.
The examiner raises this objection under Section 11 of the Trademarks Act 1999.
- Non-Filing of Form TM – 48 – The TM-48 form is used when a trademark application is submitted by a trademark agent or attorney on behalf of the applicant. If this form is missing or filled out incorrectly, the examiner may object.
- Incorrect Trademark Form – When a trademark application is not submitted using the correct form, the trademark examiner can object to it. The Trade Marks Act, of 1999 specifies that for goods or services falling into any class, the application should be made using Form TM-A.
- Incorrect Trademark class – Proper classification is crucial for filing a valid trademark application. Selecting the wrong trademark class empowers the trademark examiner to object to the application.
There are 45 classes for trademarks, 1-34 dedicated for goods, and 35-45 for services.
- Use of Descriptive Words – The examiner will label the application as “objected” when the words in the trademark suggest characteristics like type, quality, quantity, purpose, values, origin, or production time of the goods or services, making them descriptive and not distinctive in trade.
For instance, terms like “15 degrees thermometer,” “super offers,” “green space,” and “red apples” are considered descriptive.
- Unspecified Goods/ Services – The application should include a clear description of the goods and services for which the trademark is sought. If it lacks specific information, the examiner may object. However, applicants should avoid including an extensive list of goods or services.
- Deception in Trademark – It essentially means that a mark will not be eligible for trademark registration if it has characteristics that can deceive the public or cause confusion.
This is an important aspect of trademark law designed to protect consumers from being misled by trademarks that are deceptive or likely to create confusion regarding the source or qualities of goods or services. It ensures that trademarks are used to provide clear and accurate information to the public.
Additionally, marks that mainly consist of symbols or indications commonly used in everyday language or established industry practices may also face objections.
- Lack of Distinctive Character – Another reason for raising a trademark objection is when the trademark doesn’t effectively differentiate between different products and services. In such instances, the applied trademark doesn’t provide a clear contrast with other trademarks.
For instance, common words like “Sugar,” “Carbon,” or names of individuals or places lack distinctiveness.
- Unattached User Affidavit – The user affidavit confirms whether the applied trademark has been in use before the filing date of the trademark application or not. To support this claim, the applicant should include evidence of prior trademark usage with the application. If the examiner doesn’t find this evidence attached, they have the authority to mark the trademark as “objected.”
- Religious Susceptibilities – Registration is refused if the mark contains or comprises any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.
- Scandalous or Obscene Matter – A trademark is not registrable if it comprises or contains scandalous or obscene matter.
- Prohibited by Emblems and Names Act – If the use of a mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950, it cannot be registered as a trademark.
Process of Filing Trademark Objection Reply
If a trademark applicant receives the examination report with objections raised by the examiner, he should file a reply following the below process.
Study and Analysis of Objections
Upon receipt of the objection, the applicant should first thoroughly study and analyze the objections to eliminate any potential ambiguity. A comprehensive review of both the applied trademark and the examination report should be done to gain a clear understanding of the objections raised by the examiner.
Drafting of Trademark Objection Reply
Once the proper analysis of the objections is done, the next step is to prepare a draft reply. It should include the reasons, relevant case laws, and evidence as to why such objections shall be waived off and the trademark be registered in the favour of the applicant.
Additionally, supporting documents may also be attached like –
- An affidavit that states the use of the trademark by the applicant
- Advertisement of the trademark in media
- Online presence/ availability of the trademarked product/ service, etc.
Filing of Trademark Objection Reply
The applicant or agent if appointed is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of the Examination Report.
Failure to respond to the examination report or failure to file a trademark objection reply within this specified period can lead to the abandonment of the application.
Filing of Trademark Objection Reply can be complex and time-consuming! Take the help of our experts and file it easily. Get in touch with us now!
Consequences of Filing Trademark Objection Reply
Once a trademark objection reply is submitted, it is considered by the appropriate authorities. Then, any of the two possible outcomes will follow –
Trademark authorities are satisfied with the reply
If the trademark authorities are satisfied with the reply of the applicant, they accept the application and proceed towards the publication of the trademark in the Trademark journal.
A trademark is published in the journal for 4 months. During this period, third parties can oppose the registration of a trademark. If oppositions are not received, the trademark becomes eligible for registration and a registration certificate is automatically generated.
The registration of a trademark is valid for 10 years. It can be renewed every 10 years, perpetually. For renewal, you have to file FORM TM-R within one year before the expiry of the last registration of the trademark.
Trademark authorities are not satisfied with the reply
If the trademark authorities are not satisfied with the reply to the objections raised, an opportunity of hearing is provided to the applicant for further submissions/ clarifications. A notice of show-cause hearing is issued and the trademark hearing is conducted as per the schedule.
Now there can be three consequences –
- Publication of Trademark in Journal – If the hearing results in a positive outcome, the authorities will process the trademark for publication in the trademark journal, and the above-mentioned process will be followed.
- Adjournment of Hearing – The trademark authorities may adjourn the hearing to a later date.
- Rejection of the Application – The trademark authorities reject the application and now the applicant has to file a fresh application for trademark registration.
In conclusion, the process of responding to a trademark objection is a crucial phase in securing the identity of your brand. Thoroughly understanding the objections, submitting a proper and timely response, and providing necessary documentation are key to a successful outcome.