Trademark TM Objection In India: A Comprehensive Guide

Here is a comprehensive guide on objections to trademark registration. Know in detail about objection, grounds of refusal, how to respond to trademark objection and much more

TM Objection

A Trademark(TM) objection is a formal claim that a third party has infringed on your trademark. Suppose you’re the owner of a trademark, and you notice that someone else is using it to sell similar products. Any trademark filed for registration must be accurate and free of errors. Incorrect information, such as the wrong applicant’s name or principal place of business, could lead to trouble. Here are two reasons for trademark objection: 

1. Incorrect details on the trademark form: A tm objection will likely arise if the applicant’s name, principal place, or anything else in the trademark application is false
2. Incorrectly filing a trademark application: The examiner can object if the trademark application is filed incorrectly. TM-48 must accompany a trademark application if a trademark lawyer or agent files it. 

Now, let us examine the grounds on which the examiner can object. Trademark applications may be objected to under more than one ground for refusal. Trademark registration can be opposed on the following grounds: 

The Grounds for the Refusal of TM Applications

 The Trademarks Act, 1999, outlines two main types of grounds for refusing trademark registration: absolute and relative. 

Absolute Grounds for Refusal: Section 9

Absolute grounds, as described in Section 9, focus on the inherent characteristics of the trademark itself, independent of external factors or comparisons with other trademarks. 

2.1. Section 9(1): Inherent Characteristics of the Trademark

Trademarks must be distinctive, serving as unique identifiers for goods or services to distinguish them from others. However, not all marks meet this criterion.

1. Incapability of Distinguishing Goods/Services: A trademark that fails to distinguish between the goods or services of different entities is considered non-distinctive
2. Descriptive Nature of the Trademark: If a trademark merely describes the kind, quality, or other characteristics of a product or service, it may lack distinctiveness
3. Commonality in Current Language or Trade Practices: A mark that has become a common term in everyday language or widely used in trade practices cannot be monopolised by one entity.

2.2. Section 9(2): Potential Misconceptions and Sensitivities

Trademarks should not only be distinctive but also respectful and non-deceptive, recognizing the potential to mislead consumers or offend sensitivities.

1. Deceptive Nature: A trademark that can potentially deceive the public is objectionable
2. Religious Sensitivities: Trademarks should be sensitive to potential religious sentiments
3. Scandalous or Obscene Matter: Trademarks that might be deemed scandalous or obscene are not allowed
4. Prohibition under the Emblems and Names Act,1950: Certain names and emblems protected under the Emblems and Names (Prevention of Improper Use) Act, 1950, cannot be used as trademarks.

2.3. Section 9(3): The Shape of Goods and Their Exclusivity

Trademarks can extend beyond logos, names, or symbols to include the shape of goods or their packaging.

1. Shape Due to the Nature of Goods: If the shape is primarily determined by the nature of the product, it cannot be registered as a trademark
2. Shape Essential for a Technical Result: Shapes necessary for a technical outcome cannot be trademarked
3. Shape Adding Substantial Value: If the shape adds significant aesthetic value to a product, it might be deemed unregistrable to prevent monopolisation. Such designs are better protected under design patents.

Relative Grounds for Refusal: Section 11

While Section 9 focuses on the inherent nature of trademarks, Section 11 of the Trademarks Act, 1999, deals with relative grounds for refusal. These grounds consider the relationship between the applied-for trademark and existing trademarks to prevent confusion among consumers and protect the rights of current trademark holders.

3.1. Similarity with Prior Trademarks

Trademarks that resemble earlier ones, especially when the goods or services are similar, can lead to confusion among consumers.

1. Misunderstanding Due to Identical Marks: If a trademark is identical to an earlier one and the associated goods or services are similar, it may be refused registration
2.  Identical Marks and Comparable Goods/Services: Even if the goods or services aren’t identical, objections can arise if they are deemed similar, and the marks are identical.

3.2. Section 11(2) & (3): Well-Known Trademarks

Special protection is provided to trademarks well-known in India to prevent dilution or tarnishing of their reputation.

1. Trademarks Identical or Similar to Earlier Ones: If a new trademark is similar or identical to a well-known trademark, even if they aren’t in the same industry, it might be refused registration
2. Famous or Well-Known Trademarks: The act recognises the reputation of well-known trademarks and prevents others from taking undue advantage of their established goodwill.

3.3. Section 11(3): Laws of Passing Off and Copyright

Legal principles beyond the act can also serve as grounds for objection

• Passing Off: This principle prevents businesses from misrepresenting their goods or services as those of another. If a new trademark can lead to such misrepresentation, it might be refused registration
• Copyright: If a trademark infringes upon someone’s copyright, it can be grounds for refusal.

How TM Objections Work?

Suppose you have a trademark that someone else is using without your permission. In that case, you can send them a letter claiming their trademark to be confusingly similar to yours. If they don’t respond to your claim within the allotted time frame, then it becomes an official objection. But what happens if the marketer that claims your TM objecting doesn’t respond? You still have a chance at winning the case. The law states that if another party has used or started to use your mark in commerce and no one objects, then they own it. This type of automatic ownership of trademarks is known as constructive notice. So, even though the other party didn’t respond to your objection, you still have ownership of your trademark because they were using it before you objected against them.

TM Objections: How to Respond

 

A TM Objection Request: What to Expect

A TM objection is a request that an authorised party, such as a brand owner or third-party competitor, may make to the examining authority. A TM objection can be in the form of an opposition or an invalidation. Opposition is raised when someone disagrees with your mark and believes it should not be recognised as a valid trademark. Invalidation is when someone believes that you have infringed on their trademark’s rights.

How Do TM Objections Work in India?

The TM objection is a notice filed by a third party challenging the validity of your trademark application. When deciding whether to grant your trademark application, the examining authority will consider all of the objections you receive.

Steps to Get an Objection Cancelled

There are two ways to get an objection of a trademark withdrawn. It is possible to convince the trademark examining authority that the mark does not pose any likelihood of confusion with your existing mark. The other way is based on the concept of abandonment.

This means you must prove that you have not used your mark in India for at least five years since it was registered. But what if your application is rejected? The examining authority will issue a declaratory order. This basically means that your registered mark cannot be refused or cancelled due to the lack of likelihood of confusion between it and any other mark.

Conclusion 

Maintaining your brand is just as imperative as creating it. You can save time, money, and your brand by filing your TM objection reply on time. If you don’t, your trademark application might be abandoned. Check that your brand name doesn’t fall under the grounds of refusal. Check the brand name well before registering it to avoid any hassle. Don’t forget to get in touch with Vakilsearch, so you know Legal is now simple, and we have a lot of experience with trademarks and TM objections.

Frequently Asked Questions

What are the objections to trademarks?

A trademark could face objections under Section 11 if it shares identical or similar characteristics with an earlier trademark, including similarity in the goods and services covered. This provision primarily safeguards pre-existing trademarks with similar or identical features.

What is the trademark objected to and opposed?

Trademark objections are raised by the trademark examiner, whereas trademark opposition is instigated by a third party with concerns regarding the acceptance of your mark. There is often confusion between Trademark Objection and trademark opposition.

When can a trademark be objected to?

The Trademarks Act, 1999, outlines two main types of grounds for refusing trademark registration: absolute and relative.

What is Section 11 of trademark objection?

Section 11 of trademark objection refers to grounds for refusal under the Indian Trademarks Act, 1999 relating to similarity with existing trademarks, leading to confusion among consumers. If a proposed trademark resembles an existing one, particularly in name, sound, or appearance, it may be rejected to avoid potential consumer deception or infringement issues.

How do you clear an objection in a trademark?

The applicant is required to submit a comprehensive and itemised response to the registrar addressing trademark objections within one month of receiving the examination report for their trademark. Failure to do so will result in the trademark being marked as abandoned.

What is Section 9 trademark objection?

Section 9 outlines limitations on registering certain types of marks. According to Section 9(1)(a), marks lacking distinctiveness, thereby failing to distinguish the applicant's goods or services from those of others, are ineligible for registration under the Trademark Act 1999.

Can I change the trademark name after an objection?

Yes, it's possible to revise or amend your trademark application after submission.

What is the time limit for trademark objection?

The Registrar forwards a duplicate of the opposition notice to the trademark applicant, providing them with a two-month time to reply with a counterstatement.

What is the charge of objection in trademark?

Trademark (TM) objection is a formal claim that a third party has infringed on your trademark. The charges may vary greatly. Talk to our IP experts for more information.

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