A trademark is a logo/symbol/tagline that is representative of a brand’s identity. Sometimes during the trademark registration process, the Trademark Registrar may raise objections on the intended trademark if he or she feels it violates rules and laws of trademark registration. The reasons for the objection, could range from similarities with an existing trademark/ the trademark may be offensive to a particular religion/ there is an absence of a distinct design in the said trademark/or any other reason etc. Once a trademark objection has been raised a comprehensive reply must be filed within a month, from the date of issuance of the objection.
REASONS FOR TRADEMARK OBJECTION
- INCORRECT FILING OF TRADEMARK FORM: If the trademark application has not been filed using the correct form, an objection would be raised by the examiner. For example, Form TM-4 is used for registration of collective marks for goods and services in any one class. Form TM-51 is used for registration of a trademark for different classes of goods and services.
- INCORRECT APPLICANT NAME: A trademark has to be filed on the right name of the applicant and double-checked for the right spellings.
- USE OF DECEPTIVE/OFFENSIVE TERMS: A trademark name that includes terms to deceive customers with false descriptions of products/services will be rejected. For example, a product branded as Vanilla chocolates, but selling chocolate flavors under the same brand, may be deemed deceptive. A trademark application that contains offensive terms will also be rejected.
- INSUFFICIENT INFORMATION ON GOODS/SERVICES: When a trademark application fails to mention in brief, the products and services of the business, it is likely that the Trademark Examiner may reject the application due to the vague and incomplete information.
- EXISTENCE OF AN IDENTICAL MARK: The intended trademark should not be similar to any other trademark that already exists in the industry. The Trademark Examiner will then raise objections under the Trademarks Act, stating that such a trademark will create confusion among the masses.
FILING A TRADEMARK OBJECTION RESPONSE
When an objection is raised, the status of the trademark in the Indian Trademark Registry will be marked as “Objected”. The following are the steps to file a response in the event of a trademark objection:
- ANALYSIS OF TRADEMARK OBJECTION: The first step involves analyzing/studying the trademark objection. Any confusion in understanding of the objection, can lead to an incorrect filing of the trademark objection response.
- TRADEMARK OBJECTION RESPONSE DRAFT: The second step is to draft a trademark reply which includes the correct answer to the objection raised with supporting rule of law and precedents and judgments supporting the case, the differences between the said conflicting trademark and the trademark of the applicant. The draft will also consist of other supporting documents and evidence to validate the reply. An affidavit that states the use of the trademark in the applicant’s website/social media channels/ads in the media/publicity material/availability of trademarked products on e-commerce sites along with documentary proof for the same. This response draft will be filed online with the trademark e-filing portal
- TRADEMARK HEARING: If the response is accepted, the said application will be processed further for registration and advertisement in the Trademark Journal. If the application is not accepted/or there are further clarifications needed by the Trademark Examiner, then a trademark hearing will be scheduled. The applicant will be sent a notice for the same
- PUBLICATION IN TRADEMARK JOURNAL: If the outcome at the trademark objection hearing is positive, the trademark will be accepted. It will be ordered to be published in the Trademark Journal. In the event of a negative outcome, a refusal order will be passed, detailing the reasons for the refusal. The applicant will be given the option to appeal the order by filing a review petition within 30 days, from the date of the refusal order. The applicant has to mention the grounds on which the order must be reviewed
- REGISTRATION: Once the trademark is published in the Trademark Journal, it will be open to scrutiny for a period of four months. If no third-party oppositions are filed within that period, the trademark will proceed towards registration, and a registration certification will be issued. If any objection is filed in this period, then the opposition proceedings will take place as per the prescribed rules of the law.
DOCUMENTS REQUIRED FOR TRADEMARK OBJECTION RESPONSE
- The authorization letter
- The affidavit of usage
- The examination report
- The trademark hearing notice
- The documentary proof of trademark in commercial use
The duly appointed applicant/or the trademark lawyer has to appear before the authorities, on the scheduled date of the hearing.
If you have filed your trademark with us at ACE ALLIANCE, our team will inform you, that your trademark has been objected by the Registrar, within a month from the publication of the examination Report containing the objection. If you have not filed your trademark with us, it’s best you contact our team at ACE ALLIANCE within a month from the publication of the report. Our team of trademark experts will prepare the documents, submit the reply and handle your case. If the Registrar does not accept the initial response we have submitted on your behalf, an interview will be scheduled, where the arguments are will be presented in person by our ACE ALLIANCE trademark attorney If the government is satisfied with our response, the objection will be lifted within 18 months and you will receive your trademark certificate.