What is a Trademark Objection, and how to respond to it?

Last Updated at: March 04, 2020
278
What is a Trademark Objection, and how to respond to it_

OVERVIEW:

  1. What is a trademark?

  2. What is a trademark objection?

  3. How to respond to a trademark objection?

      1. Analysing the objection

      2. Drafting Of Trademark Objection Reply

      3. Trademark Hearing

      4. Publication In The Trademark Journal and appeal (if required)

      5. Registration

What is a trademark?

A trademark is a symbol and can be anything from a name, picture, and word to even a label or a sound. Once registered, it can be a precious asset for a business as, with a trademark, the business can project its unique positioning to the consumers.

Registering a trademark is the first step towards protecting your brand name. Your registered trademark is no less than a critical business asset for you. You need to keep a close watch on all the probable attempts by other businesses and individuals to register similar trademarks, even if these are related to other domains.

Don’t forget to renew your trademark. Click here to do it in simple steps.

What is a trademark objection?

A trademark objection occurs when a trademark examiner, public or a third party objects to the registration of a particular trademark. The Government trademark examiner can object to a trademark registration application by seeking valid explanations about the mark. There may be two specific reasons for such an objection-

  • Wrong on incomplete information in the application
  • Existence of a similar trademark

Besides, any third party or public may file a trademark objection in public interest-

  • When the mark gets published in the Trademark Journal
  • When the trademark is used before registration.

Such an objection should be filed within four months and the grounds for the objections should be mentioned clearly.

Whenever a trademark objection is raised, the application status will be marked as ‘Opposed’. In the case of a registered trademark, the same will be marked as ‘Objected’ in the Indian Trademark Registry. A notice will be served to the applicant/trademark user, informing him about the objection and the grounds of opposition therein.

Get a free trademark search in India, click the below link.

free trademark search

How to respond to a trademark objection?

A trademark objection reply needs to be filed within two months of receiving the said notice. You need to follow the below-mentioned steps while filing a  trademark objection reply-

  • Analysing the objection

You should study and analyse the trademark objection carefully. Any confusion or ambiguity may lead to incorrect filing of the trademark objection reply.

  • Drafting Of Trademark Objection Reply

The trademark objection reply letter should include the following:

  • A fitting answer to the objection raised with supporting rule of law, precedents and judgments
  • The differences between the trademark of the applicant and the mark in conflict.
  • Other evidence and supporting documents to validate the reply/response.
  • An affidavit stating the usage of the trademark in the applicant’s website and social media channels, media advertisements, publicity material, availability of trademarked products on e-commerce sites, etc. along with  related documentary proof.

The draft of the trademark objection reply letter is then filed online on the Trademark e-filing portal.

Know More About TM Registration

  • Trademark Hearing

Once the trademark objection reply letter is filed, the Trademark Registrar may call the parties involved for a hearing. He will then pronounce his ruling based on the submissions of the parties. The trademark will be registered if he rules in favour of the applicant. If he rules in favour of the opposing party, the application will be rejected and the trademark will be duly removed from the Trademark Journal.

  • Publication in the Trademark Journal and appeal (if required)

If the ruling at the hearing is in favour of the applicant, the trademark will be accepted by the Registry and will be published in the Trademark Journal.

In the event of a negative outcome, the applicant will have the option to appeal to the Intellectual Property Appellate Board (IPAB).

Please note:

  • The review petition/appeal must be filed within 90 days from the date of the refusal order, mentioning the grounds on which the order must be reviewed.
  • If filed after 90 days, the applicant must mention the reason(s) for the delay. The appeal will be forwarded for hearing if the IPAB accepts the reason(s).
  • If the registration application was for one class, Form-2 mentioned in the Trademark Rules needs to be filed. The trademark objection reply fees, in this case, is Rs 5000.
  • If the registration application was for two or more classes, Form-3 needs to be filed for the appeal. The trademark objection reply fees, in this case, is Rs 10,000.
  • The application must be verified by the applicant and be endorsed by the Deputy Registrar for correctness and submission of the specified trademark objection reply fees
  • The deputy registrar will issue a notice if he finds any defects in the application. The applicant must fix all the defects and resubmit the application within 2 months. If not done, the application will stand abandoned.
  • On being satisfied, the Deputy Registrar will register the case by allotting a serial number.

The case will be heard by the IPAB at an appropriate date and place. It will decide and pass an order, after hearing the parties involved. If the applicant is still aggrieved by the IPAB order, he can further appeal to the concerned High Court and to the Supreme Court of India subsequently.

  • 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 this period, the mark will be moved for registration and the Registration Certification will be issued. In case of the receipt of any objection, due proceedings will take place as per the laid down rules of law.

How to apply for Trademark Registration in the USA for Indian Brand. Know more about it.

0

What is a Trademark Objection, and how to respond to it?

278

OVERVIEW:

  1. What is a trademark?

  2. What is a trademark objection?

  3. How to respond to a trademark objection?

      1. Analysing the objection

      2. Drafting Of Trademark Objection Reply

      3. Trademark Hearing

      4. Publication In The Trademark Journal and appeal (if required)

      5. Registration

What is a trademark?

A trademark is a symbol and can be anything from a name, picture, and word to even a label or a sound. Once registered, it can be a precious asset for a business as, with a trademark, the business can project its unique positioning to the consumers.

Registering a trademark is the first step towards protecting your brand name. Your registered trademark is no less than a critical business asset for you. You need to keep a close watch on all the probable attempts by other businesses and individuals to register similar trademarks, even if these are related to other domains.

Don’t forget to renew your trademark. Click here to do it in simple steps.

What is a trademark objection?

A trademark objection occurs when a trademark examiner, public or a third party objects to the registration of a particular trademark. The Government trademark examiner can object to a trademark registration application by seeking valid explanations about the mark. There may be two specific reasons for such an objection-

  • Wrong on incomplete information in the application
  • Existence of a similar trademark

Besides, any third party or public may file a trademark objection in public interest-

  • When the mark gets published in the Trademark Journal
  • When the trademark is used before registration.

Such an objection should be filed within four months and the grounds for the objections should be mentioned clearly.

Whenever a trademark objection is raised, the application status will be marked as ‘Opposed’. In the case of a registered trademark, the same will be marked as ‘Objected’ in the Indian Trademark Registry. A notice will be served to the applicant/trademark user, informing him about the objection and the grounds of opposition therein.

Get a free trademark search in India, click the below link.

free trademark search

How to respond to a trademark objection?

A trademark objection reply needs to be filed within two months of receiving the said notice. You need to follow the below-mentioned steps while filing a  trademark objection reply-

  • Analysing the objection

You should study and analyse the trademark objection carefully. Any confusion or ambiguity may lead to incorrect filing of the trademark objection reply.

  • Drafting Of Trademark Objection Reply

The trademark objection reply letter should include the following:

  • A fitting answer to the objection raised with supporting rule of law, precedents and judgments
  • The differences between the trademark of the applicant and the mark in conflict.
  • Other evidence and supporting documents to validate the reply/response.
  • An affidavit stating the usage of the trademark in the applicant’s website and social media channels, media advertisements, publicity material, availability of trademarked products on e-commerce sites, etc. along with  related documentary proof.

The draft of the trademark objection reply letter is then filed online on the Trademark e-filing portal.

Know More About TM Registration

  • Trademark Hearing

Once the trademark objection reply letter is filed, the Trademark Registrar may call the parties involved for a hearing. He will then pronounce his ruling based on the submissions of the parties. The trademark will be registered if he rules in favour of the applicant. If he rules in favour of the opposing party, the application will be rejected and the trademark will be duly removed from the Trademark Journal.

  • Publication in the Trademark Journal and appeal (if required)

If the ruling at the hearing is in favour of the applicant, the trademark will be accepted by the Registry and will be published in the Trademark Journal.

In the event of a negative outcome, the applicant will have the option to appeal to the Intellectual Property Appellate Board (IPAB).

Please note:

  • The review petition/appeal must be filed within 90 days from the date of the refusal order, mentioning the grounds on which the order must be reviewed.
  • If filed after 90 days, the applicant must mention the reason(s) for the delay. The appeal will be forwarded for hearing if the IPAB accepts the reason(s).
  • If the registration application was for one class, Form-2 mentioned in the Trademark Rules needs to be filed. The trademark objection reply fees, in this case, is Rs 5000.
  • If the registration application was for two or more classes, Form-3 needs to be filed for the appeal. The trademark objection reply fees, in this case, is Rs 10,000.
  • The application must be verified by the applicant and be endorsed by the Deputy Registrar for correctness and submission of the specified trademark objection reply fees
  • The deputy registrar will issue a notice if he finds any defects in the application. The applicant must fix all the defects and resubmit the application within 2 months. If not done, the application will stand abandoned.
  • On being satisfied, the Deputy Registrar will register the case by allotting a serial number.

The case will be heard by the IPAB at an appropriate date and place. It will decide and pass an order, after hearing the parties involved. If the applicant is still aggrieved by the IPAB order, he can further appeal to the concerned High Court and to the Supreme Court of India subsequently.

  • 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 this period, the mark will be moved for registration and the Registration Certification will be issued. In case of the receipt of any objection, due proceedings will take place as per the laid down rules of law.

How to apply for Trademark Registration in the USA for Indian Brand. Know more about it.

0

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