How to respond to a Trademark Objection?

Last Updated On: Aug. 7, 2021, 9:55 p.m.
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HOW TO RESPOND TO A TRADEMARK OBJECTION ?

Trademark provides a unique identification to the brand and makes it different from other product available in the market. The identification can be word, logo, sound, or a photograph. So, protecting this unique identity can be crucial. Once, applicant files its application for Trademark, Examiner after examining the application, can object the application. This means Examiner has raised Trademark objection against the application.

 

Registration of Trademark?

The process of registration of a trademark is set out under Section 18 of the Act. Once you file an application to register a trademark it can take between one to two years for it to be registered.  Once you file the application for registration, you will be given an allotment number using which you can check the status of your application. The process follows as such:

  • First, the mark will go for Vienna codification
  • Then they will do formalities check, to see if the application has been filed with all required documents.
  • Next, it will be marked for an examination. Which means it will be sent to an examiner who will examine the mark for any infringements of provisions under the Act
  • If no issues are seen then the exam report will be issued. 
  • After the exam report is issued the mark will be published in the official gazette, the Trademark Journal.
  • Upon publishing it in the Journal a window of 3 months, which may be extended for an extra month, will be open for the public or third parties to object to the registration of the trademark. 
  • If there are no objections then the trademark will be registered and the applicant will be given the registration certificate and he will be protected for ten years from the date the application was filed.

 

What is Trademark Objection Reply?

Trademark objection reply means the response made by the applicant on trademark objection raised in the examination report. Respond to objection shall be made within the stipulated time. Applicant should make a comprehensive analysis of the ground of objection raised by the Examiner.

 

What is Trademark Objection?

After filing the application for Trademark Objection, when applicant checks the status of Trademark in Indian Trade Mark Registry website, it shows ‘Objected’. This means that trademark examiner has raised the objection against the trademark in the examination report.

Under Section 9 and Section 11, registrar after analyzing the application can raise the objection against the application.

 

How to Respond to an Objection

Assess the reason for objection – One of the most common reasons for the refusal of a trademark grant is its similarity with another mark. This similarity can be visual or phonetic (verbal similarity). In such a case, you will have clearly to demonstrate the following – 

  • That the marks are different in respect to the nature of goods
  • That there is no similarity in the character of the resembling mark or that it belongs to a different industry, business or trade
  • That the mode of purchasing the goods with resembling trademark or placing orders is different
  • Any other surrounding circumstances to convey that the overall impression that the consumer gets from the goods is not confusing as to the source or origin of the goods. 

 

REASONS WHERE OBJECTS CAN BE RAISED:

1.    Incorrect details in Trademark form:

When the applicant furnishes the wrong details related to applicant name, or principal business place or any other relevant information. False information is likely to raise a trademark objection.

 2. Wrong filing of a Trademark form 

The objection can be raised on the incorrect form filed by the Examiner. If the trademark application is filed by the trademark attorney or agent, then it’s mandatory to file TM-48 form along with the trademark application.

Other grounds of the objection of trademark;

  • Deceptive Mark
  • Lack Distinctiveness
  • The existence of Identical Trademark
  • False specification of goods or services
  • Offensive or obscene words

 

What should be included in the response of Trademark Objection?

  • Systematically answer to the objections being raised by the registrar;
  • Next, attach the supporting case laws to support your reply of the trademark office; Supporting documents to prove the uniqueness of your trademark;
  • An affidavit shall be filed along with the reply, which shows that the trademark is unique and is associated with the goods and services.
  • While drafting the reply, the applicant should keep an eye over the cited objection raised. A good reply will help in getting a chance of hearing, which can accelerate the trademark objection reply process.
  •  In furtherance to the reply process, good  IPR attorney focuses on every small detail of the objections raised. If the applicant fails to satisfy the trademark office from his reply, he even can make his submission orally. Such hearing is conducted by Assitance registrar, or by Senior Examiner of trademark.

 

 

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