How to reply trademark objection
This article lets us learn how to reply trademark objection your Trademark Application is in Abandoned Status… Not only yours, While doing a Trademark registration search, you will find numerous applications that’s been in abandoned stage.
In Trademark Registration process, abandoned is the status where the applicant has not followed the application properly or failed to submit the necessary replies on time.
Plenty of people file the Trademark application but do not follow the application on time, specifically replying to the objections raised by the Registry.
So here in this Article, we are going to discuss the reasons for Tradeamrk objection and also the reply to the same.
WHAT IS A TRADEMARK?
A trademark is a symbol or sign which is capable of distinguishing the goods or services of one Business from those of others. In simple worlds, the term Trademark includes
How to do Trademark Registration in India?
The Trademark Registration process comprises various stages and the same is explained below.
Step 1: Trademark Registrability analysis, this is the First Step that needs to be carried out before filing a Trademark Application before the Trademark Registry. Here we will check whether the name that we want to register is Registrable or would there will be any difficulty. This is the first stage…
Step 2: Filing of Trademark Application before the Central Government. This process of filing is nothing but submitting the necessary Application along with the Logo and user affidavit. Once the application is submitted, the registry will allocate the Trademark Application Number.
Step 3: Examination Stage, this is the stage where the Registry will examine our application and if there is any deviation in the Name that is applied for Registration, the registry will issue an examination report. And we need to reply to the same within the Stipulated Time.
Step 4: Publication Stage. Publication of the application in the Government Gazette. Once the application is published in the Gazette, any aggrieved third party may raise opposition
Step 5: Opposition Stage: If any opposition is raised, we need to submit a reply along with Evidence of usage of our brand name. There will also be a Hearing before the Registrar by the Lawyers of both parties.
Step 6: Once the Registry is satisfied with the trademark objection reply and also the Opposition process, a Certificate of Trademark will be issued. And the certification is to be renewed every 10 years.
WHY TRADEMARK REGISTRY RAISES OBJECTION?
Trademark objection is a preliminary stage in the TM Registration process.
The mark may be objected to by the Examiner for various reasons as per the Trademark Act, This doesn’t mean that the application is refused, here, the examiner seeks the applicant’s reply for the clarifications raised.
What are the types of trademark objection
OBJECTION NO. 1
Section 9 of Trademark Act, 1999 says about the Absolute Ground for Refusal of a Trademark Application
Section 9(1)(a): Not Distinct:
The Job of the Trademark is to distinguish the goods of one manufacturer from that of the other, but a trademark which does not achieve the object, that is to say, not capable of distinguishing the goods from others, is called Devoid of Distinct.
Eg. A meaningless word TATA for Cars manufacturing, we can clearly say it is distinct. But a common Generic word such as “Hi or Hello” does not have any distinctiveness.
Marks consisting of single letters or two letters or numbers will be generally regarded as “devoid of distinctive character” for goods
In simple words, not The mark should be unique
HOW TO REPLY FOR the Trademark OBJECTION for Section 9 and Section 9(1)(a): Not Distinct?
The Applicant must provide proof that the trademark has a character which is unique and distinct,
Another way to overcome the objection under class 9(1)(a) is to prove the longer usage of the mark and by that we can provie Trademark gets significance in General Public
OBJECTION NO. 2
Section 9(1)(b): Describes the product:
A mark that includes or serves in trade to designate the kind, type, quality, quantity, purpose, or geographic origin, shall not be registered as a Trademark.
Eg. Fancy Number for a Sim Card Company would be considered as a mark representing the quality or value of the product and would be an absolute ground for refusal
HOW TO REPLY FOR the Trademark OBJECTION of Section 9(1)(b): Describes the product?
We can reply by stating that the Applicant’s mark can be distinguished from the goods and services it stands for.
Eg. Even though Juicy is a Descriptive Term, it can be used for goods other than food products
The Applicant’s mark has acquired distinctiveness due to its extensive use relating to the goods it stands for by a long time before the application was even made.
Section 11 of Trademark Act, 1999 says about the Relevant Ground for Refusal of a Trademark Application:
A Trademark Application which is similar to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
Eg. Adidas Vs Adimas
A Trademark Application is identical to an earlier trade mark
Eg. Eleven Steps Vs. 11 Steps
HOW TO REPLY FOR the Trademark OBJECTION of Section 11 Section 11(1) and Section 11(2)?
- Honest and Concurrent usage would be the best way to defend against the refusal of the application for registration
- The goods or service is not identical to that the marks shown in the objection report
What are the steps and How to reply to a trademark objection?
Step 1: Read the Objection report carefully and compare the similar marks shown in the report
Step 2: Draft a Legal reply to the objection report
Step 3: Collect the evidence and prepare an Affidavit
Step 4: Submit the reply within 30 days from the date of receipt of reply
Step 5: Look for hearing