A trademark can be opposed once the same has been published in the Trademarks Journal within a prescribed period of four months from the date on which the mark was advertised or re-advertised
Trademarks confer a right to use specific shapes, symbols, and colours on goods owned by a business. The process of trademark registration requires careful planning and execution.
If you are trademarking a product in India, then it is required to get approval from the registrar of trademarks.
Most cases are approved, but sometimes the registrar can object to the trademark request. If not properly responded to, this objection can lead to delays or trademark rejection.
In this article, we highlight what you must do in case you receive an objection from the registrar for the grant of the trademark.
Steps Involved in the Process of Trademark Registration
Vakilsearch helps you with your trademark registration. Have a glance at the three steps, and you will know how we help you with your registration
- We conduct a thorough search through the Trademark Directory
- We advise you on the classes you need to apply under
- You will receive regular updates until the process is completed.
Grounds For Objection
A trademark can be refused if it is not distinctive. If the mark consists of a common surname, name, name of the place, a section of society, common geometrical devices, etc., it is not regarded as capable of distinguishing the goods or services. It can also be objected to for being too broad or unrelated to the goods and services of the applicant.
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.
Factual Errors in Classification
The International Classification of Goods and Services is published by the registrar of trademarks, and available on its website. In case there is inaccuracy in this classification, it can be remedied by filing form TM-16 for corrections
Filing Evidence with the Registrar
You will have to include a set of documents to further your case for the grant of the trademark.
- This would include proof of usage of the mark on goods, the official website of the applicant, trading circles, or any other significant place. For 3D marks, accurate pictures are required
- In the case of similarity, the applicant can either demonstrate the distinction between the marks or can make alterations in his mark
- A no-objection certificate can obtain from the proprietor of a similar mark
- In certain cases, the Registrar may feel that the trademark is unrealistically broad or unlikely that the applicant would deal in or provide that range of goods or services. In such instances, you would have to demonstrate that the trademark is used or intended to be used on all the goods and services specified. Further, proprietors may furnish actual proof of such goods, if already in existence.
Business plans, templates, maps, and prototypes can also be good evidence. Similarly, the ‘object clause’ of the Memorandum of Association may also be furnished.
Frequently Asked Questions
1. How do I file a trademark objection response online?
The response to objections in the examination report can be offered by you or your authorized agent, as a ‘Reply to Examination Report’. Moreover, the response to office objections can be submitted by sending the scan copy (in color pdf file format) of the Reply to Examination Report, at email@example.com.
2. Can trademark objections be filed offline?
Yes, The reply to trademark objection can also be presented at the head office/appropriate office of the Trademarks Registry, personally or by post. Additionally, any affidavit and supporting documents may also have along with the reply.
3. How do you know if a trademark is under objection?
On the Trademark Registry website, the word ‘objected’ would be mentioned next to the application.