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TRADEMARK OBJECTION

TRADEMARK OBJECTION

The main role of the trademark objection is to safeguard the brand and the company’s name and their value. It prevents the similar marks which lacks the distinctiveness of the other brands. The Trademark Objection is one of the major parts in the process of trademark registration. With the Objection, No one can entitle for the trademark registration for their brand. The main role of the trademark objection is to object to the brand for using the unauthorized characters and using the similar names for their brands. Without the proper objection to the trademark within the given time frame, the applicant’s application may have the chance to be abandoned by the trademark registry. So the proper clarification and reply to the objection which helps to move the application status to the next stage.

Why register your trademark?

A trademark is a visual symbol, which may be a word, name, device, label, or number, used by a business to distinguish its goods or services from other similar goods or services of another business. A trademark is a protectable asset under Indian laws and regulations.

If you do not register your trademark, someone else will register it in their name. Did you know? You can even register the trademark you want to use in the future. Trademark registration protects your brand name from being misused or copied. Further, it also curtails unfair competition.

As a general practice, some people register their trademark after they have started using it. But that’s not the right way to do it. Because when a trademark starts to be used in the market, then there is a huge possibility of duplication.

Trademark registration is crucial for businesses as it safeguards their distinct identity in the market. A trademark serves as a unique identifier for goods or services. Registering your trademark in India establishes legal protection, preventing others from claiming it as their own. By proactively registering your trademark, you not only secure your brand name but also prevent potential misuse and unauthorized duplication. 

What are the procedures for registering a trademark?

  1. Trademark Registration Search: Before applying for a trademark, conduct a thorough search to ensure there are no prior users of the brand name/logo in the same business classification, avoiding conflicts.
  2. Fulfillment of Trademark Criteria: Ensure that the criteria for trademarks are met before initiating the application process, meeting legal requirements for successful registration.
  3. Application Submission and Fee Payment: Complete and submit Form TM A with relevant details, alongside required fees for the trademark application process.
  4. Allotment of Trademark Number: Upon successful submission, a unique Trademark number (TM- No.) will be allotted to the application.
  5. Publication of Details by the Government: The Trademark Registry will publish submitted details online, including the brand name, company details, ownership information, business nature, etc.
  6. Examination Report Issuance: The registry will conduct a search and issue an Examination Report, detailing whether the criteria and legal provisions are satisfied.
  7. Publication in the TM Journal: If all criteria are met, the trademark details will be published in the official gazette (TM Journal), marking a crucial step towards registration.
  8. Oppositions and Hearing: In case of objections, a hearing may be conducted based on the examination report. The government will decide on registration after considering arguments.
  9. Certificate of Registration Issuance: Upon successful completion of the process and resolution of any objections, the government issues the certificate of registration for the trademark.

What are the grounds for an objection?

An application for registration of a trademark may be objected to during the examination procedure on the basis of Sections 9 (absolute grounds for refusal) and 11 (relative grounds for refusal) of the Trademarks Act.

1. Similarity with other marks:

The similarity of marks is one of the most common but important trademark objections in India and is provided under Section 11 (1) of the Trademark Act. This arises in case the applicant’s TM is similar or identical to someone else’s mark already filed or registered under the Act, leading to confusion in the marketplace. Example if there are two businesses one with the name Digital School and other with name Digital Hub then this might be objected to by the Trademark Registry. 

2. Lack of distinctiveness:

If a mark is incapable of distinguishing the goods or services of one person from those of another, it is said to be devoid of any distinctive character and therefore liable to be objected to. This is again a common ground for opposition and also an absolute ground for refusal under Section 9(a) of the Trademarks Act,1999. This objection is based on the principle that a trademark should be inherently capable of identifying the source of goods or services.

3. Descriptive mark:

If a mark contains a common word used to identify the quality or quantity, or value of goods or services, the mark will be objected to under section 9 which is an absolute ground of refusal.

For example, in the food industry, the mark “Tasty Foods” will be rejected by the Trademark Register because the mark clearly describes the quality of the goods/services. However, the mark “Tasty” cannot be a descriptive word for computer-related goods and can therefore be accepted for registration.

4. Generic words:

Again, Section 9 restricts generic terms. Generic terms are common words that we use casually. For this reason, these names cannot be distinctive of the goods/services. Some examples are “Hi”, “Hello” or “Good Morning”.

5. Offensive Trademarks:

If a trademark consists of a word that is offensive in nature, the trademark will be contrary to public order and morality and may therefore be refused under Section 9 of the Trade Marks Act. The Trademarks Act aims to prevent the registration of marks that may be considered socially or culturally inappropriate.

6. Other grounds:

There are some other grounds for refusal of a trademark, such as

  1. Government symbols or names
  2. Religious symbols or terms
  3. Personal names

The rationale is to avoid the misuse or inappropriate commercialization of such symbols, names, or terms that hold significant cultural, religious, or governmental value. The Registry may object to protection against potential misuse or disrespect.

Steps for handling an objection:

We have already talked a lot about the trademark registration process. During the examination process, if the examiner finds any discrepancy, the applicant may receive a Notice called the Examination Report, to which we have to submit a detailed response. Engaging an advocate can be invaluable to ensure a comprehensive and legally sound reply. 

    1. Deadline: The response must be submitted within 30 days from the date of receipt of the Examination Report, failing which the application may be deemed abandoned.
    2. Reply to Notice:  As stated above, a legal response is required within 30 days of receipt of the examination report. The response should set out the facts and the reasoning and present on our side of the case. The response should be written in such a way that it is possible to establish supportive grounds and give a logically relevant reply as to why the mark applied for is unique in nature and does not fail to comply with the provisions of the Trademark Act.
    3. Hearing: If the registry is not satisfied with our response, they will schedule a hearing and we must appear on the specified date with supporting evidence and argue our case.
    4. Appeal: If the trademark application is refused, the aggrieved party can file an appeal with the Intellectual Property Appellate Board (IPAB).
    5. Order: If the Registrar is satisfied with our response or arguments, he will issue an order for publication in the Official Gazette of the Trademark Registry, also called the Trademark Journal. However, if the Registrar is not satisfied with the merits of the case, the application may be refused.

How to respond to opposition?

If the objection is only about a formal compliance/requirement:

If the objection is for a simple reason of defects in the filing, such as failure to attach a power of attorney, an error in the description of goods, or a lack of clarity in the constitution of the company, then the examiner will issue a simple objection.

 The reasons for simple objections are

  1. Non-submission of power of attorney
  2. Goods not in accordance with NICE Classification
  3. Evidence of use not provided
  4. Transition not mentioned for marks other than English and Hindi

For the above reasons, we have to comply with these requirements and simply reply to the same.

A. Opposition on absolute grounds: Section 9

As per the Trademark Act, any mark which is applied for Trademark Registration must be Distinctive and is not to be descriptive. If an objection is raised on the grounds of lack of distinctiveness, we must file a response stating that the mark can be distinguished from others because of the unique features, such as any feature in the logo, or even because of long and extensive use. The applicant may also file a detailed affidavit together with the evidence of use.

B. Opposition on Relative grounds: Section 11

The next common ground for refusal is that the mark is similar or identical to the other mark. This is to protect the interests of existing trademark holders. If an opposition is filed on the basis of an identical or similar mark in existence, the reply can be given to establish

  1. Prior use
  2. Honest and Concurrent usage
  3. That the Goods/services are different

Documents required for the submission of evidence at the hearing :

There is no specific rule regarding evidence. We need to show the existence of the mark by the business from the year of its establishment as stated in the trademark application or usage of the same for a considerable period of time. Some of the common pieces of evidence are

  1. Invoices/Receipts/Bills
  2. Government license certificates
  3. Bank certificate
  4. Newspaper advertisements
  5. Domain name certificate
  6. Tax returns, etc.
FAQ

Frequently Asked Questions (FAQs)::

How is Trademark Objection different from Trademark Opposition?

When the trademark application is being examined, the Registrar raises a trademark objection. A trademark opposition, on the other hand, is submitted by a third party—typically another trademark holder after the publication of the Trademark in the Trademark Journal.

What are the reasons for Trademark Objection?

Trademark objections often arise due to reasons such as lack of distinctiveness, the use of descriptive marks, offensive trademarks conflicting with public morals, instances of similarity, or when the proposed mark is identical to existing trademarks.

What to do if one receives a Trademark Objection?

One should ensure that he/she serves a response within 30 days of receiving the objection. It is essential to respond with thoughtful consideration to every objection brought up. If applicable, offer proof to disprove the objections made. This can include evidence of uniqueness, or evidence of previous use etc. One can approach an experienced Trademark Attorney who can help in filing the reply.

Can a Trademark objection be appealed?

Within three months of the date of rejection, an appeal may be filed with the Intellectual Property Appellate Board (IPAB) in the event that the trademark application is denied. Seeking advice from a trademark attorney regarding the appeals procedure is recommended. 

TRADEMARK OBJECTION
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