There are a host of reasons why trademark applications fail, and it is important for any prospective IP holder to know why this can happen and understand what to do as a next step. Read on to know these answers.
A trademark registration application can generally be objected for registration on absolute or relative grounds for denial, such as conflict with earlier trademarks and well-known marks, or because it is forbidden for registration. In this article, we’ll look into trademark objection in the context of absolute grounds for trademark denial. Know Why Do Trademark Applications Get Rejected?
A trademark gives a company the right to use certain distinctive marks. This allows the business to increase its commercial value, goodwill, and reputation in the eyes of its customers. However, there are several instances where the trademark Registrar will refuse to grant a trademark. We examine the reasons for refusal and the procedures you should take if you are refused.
What is a Trademark?
Trademarks are marks that are used to identify the source of goods or services produced by a specific company or individual. These markings allow consumers to quickly associate a product with its manufacturer.
These marks are legally protected to ensure that they are not used to mislead products or confuse consumers. A trademark must be registered in order to receive legal protection. The mark will be protected from being used illegally if it is registered, and the owner of the mark will have complete ownership of the mark.
Why Do Trademarks Get Rejected?
The officers of the registry examine a trademark application carefully, and if they discover any violations of the law or other registered marks, they may reject the trademark’s registration application. However, at this stage, the application status will read “Marker for Exam.”
Under Section 9 of the Trademarks Act, the following are the grounds for a refusal to register trademark –
- No distinguishing factor in the mark – For example, a stationary brand called “pencils” cannot be registered for being very generic.
- 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 are usually disallowed unless they demonstrate a clear relationship between origin, quality, and distinctiveness in the product.
- 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.
- 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 trademarks.
- The mark that can cause confusion in public (Parle G, vs Parle J biscuits), hurt religious sentiments, is scandalous or obscene or uses a national symbol cannot be registered.
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 of your trademark.
How to Establish Distinctiveness in Your Mark?
The examining officer considers the following aspects for determining uniqueness in your application:
- The market share held by the mark
- How intensive, geographically widespread, and long-standing the use of the mark has been
- The amount invested in promoting the mark
- The percentage of the relevant class of people who identify products as originating from a specific company because of the mark
- Statements from Chambers of Commerce and Industry or other trade and professional associations.
Opposition From a Third Party as a Reason for Trademark Refusal
- Within four months from publishing or advertising, 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 be filed by a person on the basis of absolute and relative grounds mentioned above.
You can trust Vakilsearch to provide you with the best legal assistance when it comes to registering your business trademark online. Vakilsearch would assist your business at every step in getting a registered trademark for your firm, having registered hundreds of trademark applications since its beginning. With us, each case is given the attention it deserves, and our top lawyers will manage your case and create the necessary documentation and guide you throughout the process.