What Should You Do When Your Trademark has been Refused

Last Updated at: August 01, 2020
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What Should You Do When Your Trademark has been Refused

A trademark confers the right on the business to use certain distinctive marks. This allows for building commercial value, goodwill, and reputation in the eyes of the customer of the business. However, there are certain cases where the registrar of trademarks would be Refused to grant a trademark. We analyse the grounds for refusal and appropriate steps that you must take in case of refusal. 

Why do trademarks get denied?

Absolute grounds for refusal of a trademark

Under Section 9 of the Trademarks Act, the following are the grounds for a refusal to register a trademark –

  1. No distinguishing factor in the mark – For example, a stationary brand called “pencils” cannot be registered for being very generic 
  2. Marks indicating only quality, quantity, geographical origin – For example, a wheat production company selling its atta under the name “The Best” is at best, only indicative of quality. Similarly, place-names usually disallow unless they demonstrate a clear relationship between origin, quality, and distinctiveness in the product. 
  3. Mark sought to be registered has already become a well-known mark, or has come into customary use. For example, “Xerox” has come to mean photocopying in normal parlance and therefore, cannot be registered. 
  4. Marks only referring to the shape of goods cannot be registered. However, shapes such as that of the Coca-Cola bottle, various packaging styles can be granted trademark. 
  5. Other reasons – The mark can cause confusion in public (Parle G, vs Parle J biscuits), hurt religious sentiments, is scandalous or obscene, or uses a national symbol. 

Relative grounds for refusal of a trademark

When the mark is deceptively similar to an existing trademark, the Registrar may refuse to grant registration to you. This is, however, a subjective assessment. Therefore, it becomes imperative for you to convince the Registrar of the distinctiveness in your trademark. 

Protect your brand now

How to establish distinctiveness in your mark 

To establish distinctiveness in your application – the following factors are relevant by the examining officer- 

a) the market share held by the mark;

b) how intensive, geographically widespread and long-standing the use of the mark has been;

c) the amount invested by the undertaking in promoting the mark;

d) the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking;

e) statements from Chambers of Commerce and Industry or other trade and professional associations

Opposition from another party as a ground for refusal of a trademark

  • Within four months from publishing or advertisement, a person can submit an objection against the grant of a trademark to the Registrar. 
  • This can be any person and there is no requirement of any commercial interest. 
  • Usually, persons holding a prior right of usage in the trademark, or someone whose consent is necessary but was not taken opposes the grant of the trademark. 
  • An opposition can also file by a person on the basis of absolute and relative grounds mention above. 

Frequently Asked Questions

1. What happens if your trademark is denied?

Process – You’d require to file a counter-statement to the opposition through Form TM-6, with a prescription fee of ₹1000. This also requires the filing of evidence in the form of an affidavit in support of your trademark. After receiving this evidence, there would be an oral hearing in the presence of the Hearing Officer of the Tribunal. If there is no response from the applicant for the opposition, it may consider as abandon. 

Additionally, Form TM-57 can file with the Registrar to seek a review of the decision, within one month from the date of such decision. 

2. How to reduce the risk of refusal while applying for trademark registration online

Here are a few pointers to help you prepare better for a trademark application – 

  • Describe your trademark accurately – Providing a concise and accurate description of the trademark on the application helps in easy processing. The description should state precisely what the mark consists of (colours, shapes, borders) and how the description relates to the representation. This helps define the scope of the registration. Include digital copies, in colour as well as black and white. 
  • Provide evidence of the use of the mark – Long duration of use (even without registration) comes handy in making a case for registration. Therefore, keep proof of use of the mark in internal communications, with consumers through advertising (print, web or any other source) 
  • Mention the correct international classification of goods 
  • Keep the scope of the trademark application very specific– If the application for registration of a trademark is too broad (for example, mentioning just “machines” without qualifying the type, use, or purpose of machines), it can be refused by the Registrar. 
  • Obtain a no-objection certificate from the designated person if names of persons, pictures, portraits are being used in your mark 

3. What does “refused” mean in a trademark?

The examiner of a trademark assesses your application to ascertain if the grant of a trademark is likely to cause any confusion to the public or generally be against the principles of trademark law. For this purpose, he runs a wordmark search (for similarity in words, sentences or phrases) or phonetic search (for verbal similarity). He would then assess if your mark aligns closely with any other already registered mark. Based on this assessment, your trademark may refuse.

 

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What Should You Do When Your Trademark has been Refused

348

A trademark confers the right on the business to use certain distinctive marks. This allows for building commercial value, goodwill, and reputation in the eyes of the customer of the business. However, there are certain cases where the registrar of trademarks would be Refused to grant a trademark. We analyse the grounds for refusal and appropriate steps that you must take in case of refusal. 

Why do trademarks get denied?

Absolute grounds for refusal of a trademark

Under Section 9 of the Trademarks Act, the following are the grounds for a refusal to register a trademark –

  1. No distinguishing factor in the mark – For example, a stationary brand called “pencils” cannot be registered for being very generic 
  2. Marks indicating only quality, quantity, geographical origin – For example, a wheat production company selling its atta under the name “The Best” is at best, only indicative of quality. Similarly, place-names usually disallow unless they demonstrate a clear relationship between origin, quality, and distinctiveness in the product. 
  3. Mark sought to be registered has already become a well-known mark, or has come into customary use. For example, “Xerox” has come to mean photocopying in normal parlance and therefore, cannot be registered. 
  4. Marks only referring to the shape of goods cannot be registered. However, shapes such as that of the Coca-Cola bottle, various packaging styles can be granted trademark. 
  5. Other reasons – The mark can cause confusion in public (Parle G, vs Parle J biscuits), hurt religious sentiments, is scandalous or obscene, or uses a national symbol. 

Relative grounds for refusal of a trademark

When the mark is deceptively similar to an existing trademark, the Registrar may refuse to grant registration to you. This is, however, a subjective assessment. Therefore, it becomes imperative for you to convince the Registrar of the distinctiveness in your trademark. 

Protect your brand now

How to establish distinctiveness in your mark 

To establish distinctiveness in your application – the following factors are relevant by the examining officer- 

a) the market share held by the mark;

b) how intensive, geographically widespread and long-standing the use of the mark has been;

c) the amount invested by the undertaking in promoting the mark;

d) the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking;

e) statements from Chambers of Commerce and Industry or other trade and professional associations

Opposition from another party as a ground for refusal of a trademark

  • Within four months from publishing or advertisement, a person can submit an objection against the grant of a trademark to the Registrar. 
  • This can be any person and there is no requirement of any commercial interest. 
  • Usually, persons holding a prior right of usage in the trademark, or someone whose consent is necessary but was not taken opposes the grant of the trademark. 
  • An opposition can also file by a person on the basis of absolute and relative grounds mention above. 

Frequently Asked Questions

1. What happens if your trademark is denied?

Process – You’d require to file a counter-statement to the opposition through Form TM-6, with a prescription fee of ₹1000. This also requires the filing of evidence in the form of an affidavit in support of your trademark. After receiving this evidence, there would be an oral hearing in the presence of the Hearing Officer of the Tribunal. If there is no response from the applicant for the opposition, it may consider as abandon. 

Additionally, Form TM-57 can file with the Registrar to seek a review of the decision, within one month from the date of such decision. 

2. How to reduce the risk of refusal while applying for trademark registration online

Here are a few pointers to help you prepare better for a trademark application – 

  • Describe your trademark accurately – Providing a concise and accurate description of the trademark on the application helps in easy processing. The description should state precisely what the mark consists of (colours, shapes, borders) and how the description relates to the representation. This helps define the scope of the registration. Include digital copies, in colour as well as black and white. 
  • Provide evidence of the use of the mark – Long duration of use (even without registration) comes handy in making a case for registration. Therefore, keep proof of use of the mark in internal communications, with consumers through advertising (print, web or any other source) 
  • Mention the correct international classification of goods 
  • Keep the scope of the trademark application very specific– If the application for registration of a trademark is too broad (for example, mentioning just “machines” without qualifying the type, use, or purpose of machines), it can be refused by the Registrar. 
  • Obtain a no-objection certificate from the designated person if names of persons, pictures, portraits are being used in your mark 

3. What does “refused” mean in a trademark?

The examiner of a trademark assesses your application to ascertain if the grant of a trademark is likely to cause any confusion to the public or generally be against the principles of trademark law. For this purpose, he runs a wordmark search (for similarity in words, sentences or phrases) or phonetic search (for verbal similarity). He would then assess if your mark aligns closely with any other already registered mark. Based on this assessment, your trademark may refuse.

 

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Avani Mishra is a graduate in law from the National Law Institute University, Bhopal. She qualified the Company Secretary course with an All India Rank 1 and is a recipient of the President’s Gold Medal for her academic distinctions. She also holds a B.Com degree with a specialization in Corporate Affairs and Administration.