Trademark Objection Handling


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Why to Register your Trademark?

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

If you Fail to Register Your Trademark, then someone will get it registered in their name. Do you know even you can register your Trademark which you are going to use in the future? Trademark Registration protects your brand name against misuse or duplication. Further, it also curtails unfair competition.

As a general practice, some people use to register their brand after started using the same. But actually, it’s not a proper way. Because, if a trademark is been started using in the market, then there is a huge possibility of duplication or copying will happen.

How to Register a Trademark?

1. Search

2. Trademark Application Filing

3. Examination

4. Objection

5. Examination Report Reply

6. Hearing

7. Journal Publication

8. Registration

What is an Objection?

During the process of Trademark Registration, the trademark Registry’s examiner shall examine the Trademark Application and understands whether the mark is similar or identical to any other mark or the Trademark describes the goods and service of the applicant and if he is satisfied with all the norms, the application shall be published in the Official Trademark Journal. If the examiner finds any deviation, he shall mention the same issue the Examination Report and that is called as ‘Objection’.

What are the Reasons for Trademark Objection

The application for Trademark Registration can be objected, during the examination process, under Section 9 (Absolute grounds for refusal) and 11 (relevant ground for refusal) of the Trademark Act.

1. Similarity with other Trademarks:

Similarity of Trademarks is one of the most common but major Trademark Objection in India and internationally, it is very clearly under section 11 (i) of the Trademark Act, in simple terms it is called as a Section 11 Trademark Objection on an Application. This arises in case the Applicant’s TM is similar or identical to someone else’s mark already applied or registered under the act.

2. The Trademark Lack of Distinctive Character:

If one trademark is unable to distinguish a goods or service of one person from those of another person are said to be devoid of Distinctive Character and hence is liable to be objected. This is again a common ground of Objection and also an absolute fround for refusal of trademark.

3. Descriptive Mark:

As per Section 9 of Trademark Act, if a Trademark contains a common word which use to identify the quality or quantity or value of goods or service, the mark shall be objected under the absolute ground of refusal.

For example, for a food industry, the mark “Tasty foods” will be rejected by the Trademark Register as the mark clearly describes the quality of the goods/service. But whereas the mark “Tasty” cannot be a descriptive word in Computer related goods and hence can be allowed for Registration.

4. Generic Words:

Once again section 9 restricts the Generic names too. Generic terms means common words that we are using casually. Because of the reason that those names cannot have distinctiveness to the goods/service. Some examples may be “Hi” or “Hello” or “Good Morning”.

5. Offensive Trademarks:

If a Trademark consists of any word which is offensive in nature, the mark will be against public morality and public order and hence can be struck down from registration under section 9 of the Trademark Act.

6. Other grounds:

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

a. Government symbols or names

b. Religious symbols or terms

c. Personal names

Steps to handle an objections

We had already discussed a lot about the Trademark Registration process. During the examination process, if the examiner find any deviation, the applicant may receive a notice, which is nothing but Examination report. For which we need to submit a detailed reply, legally .

Time Limit: The reply need to be submitted within a period of 30 days from the date of receipt of the Examination report, failing which the application may be deemed abandoned.
Hearing: If the registry is not satisfied with our reply, they shall fix up a hearing and we need to appear on the specific date with the supportive evidence and argue our case.

Response to Notice: As already said, we need to a legal reply within 30 days from the receipt of the examination report. The reply should state the facts and rezoning showcasing our side merits. The reply shall be drafted in a manner which can build supportive grounds and able to give proper logics why the mark applied for is unique in nature and does not fail to comply with the provisions of the Trademark Act.

Hearing: If the registry is not satisfied with our reply, they shall fix up a hearing and we need to appear on the specific date with the supportive evidence and argue our case.

Appeal: If the Trademark Application is refused the aggrieved party may move an appeal petition before the Intellectual Property appellate board, shortly called as IPAB.

Order: If the registry satisfies with our reply or arguments, they will pass an order for publication in the official Gazette of the Trademark Registry.  But if the registrar is not convicted with the merits, then the application may be refused.

What would be our response against an objection

If an objection is raised for just a formal compliance/requirement:

If the objection is for a simple reason of defective submissions like non-attachment of Power of Attorney or mistake in goods or non clarity in constitution of business, then the examiner will issue a simple objection.

A. The reasons for simple objections shall be:

  1. Non submission of Power of Attorney
  2. Goods not as per NICE Classification
  3. Evidence of usage not submitted
  4. Transition not mentioned for marks other than English and Hindi

For the above reasons, we need to comply with those requirements and simply reply for the same.

B. Objection on Absolute Ground for refusal: Section 9

As per the Trademark Act, any mark which is applied for Trademark Registration must be Distinctive and not descriptive. If an objection is raised because of non-distinctiveness, we need to submit a reply stating that the mark can be distinguished from other because of the unique features such as Logo or even because of the long and extensive usage. The applicant can also submit a detailed affidavit along with evidence of usage.

C. Objection on Absolute Ground for refusal: Section 9

The next common grounds for refusal is that the mark is similar or identical with that of the other trademark. This is to safeguard the interest of the existing trademark holders. If an objection is raised on the ground of Identical or similar brand in exitance, the reply would be:

  1. Prior use
  2. Concurrent and Simultaneous use
  3. Goods/service is different

Documents required for submission of evidence during the hearing process:

There is no specific rule in relating to evidences. We need to showcase the existence of the mark from the year as stated in the Trademark Registration Application. Few of the common evidences are

1. Invoices/Receipts/Bills

2. Government Licence certificates

3. Banker certificate

4. News Paper advertisements

5. Domain name certificate

6. Tax returns, etc…

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