During the trademark registration process, the Trademark Registrar raises objections on
the intended trademark if it violates any of the rules and laws of Trademark.
We will assess the implications of the notice
We will prepare the formal affidavit addressing the objections
The first interview, if required, will be attended by the lawyers
A trademark is a logo, symbol, tagline, or a combination of both that represents a brand’s identity. Oftentimes, during the trademark registration process, the Trademark Registrar raises objections on the intended trademark if it violates rules and laws of trademark registration. It could be due to several reasons like similarity with an existing trademark; offensive to a particular religion; absence of a distinct design; etc. In the event of a trademark objection, a comprehensive reply needs to be filed within a month, from the date of issuance of the objection.
Filing a prompt response to a trademark objection, along with supporting evidence has the following benefits.
The Trademark Examiner scrutinizes the trademark application to make sure the application isn’t in conflict with any trademark rules. A trademark application can face objection for any of the following reasons:
If the application is not filed using the correct form an objection would be raised by the examiner. For example, it is Form TM-4 for registration of collective marks for goods and services in any one class. Form TM-51 for registration of a trademark under different classes of goods and services.
Trademark has to be filed on the true name of the applicant and double-checked for the right spellings.
Trademark names that include deceptive terms or that which try to deceive or mislead customers with false descriptions of products or services will be rejected. For instance, an entity branded “Vanilla chocolates” that sells chocolate flavours may be deemed deceptive. At the same time, applications registering for trademarks containing offensive terms will be rejected.
When the trademark application fails to mention in brief the products and services of the business, it is highly likely that the Trademark Examiner may reject the application due to the vague information.
The intended trademark must not be similar to any mark that already exists in the industry. The Trademark Examiner can raise objections under the Trademarks Act stating that it might create confusion among the masses.
When an objection is raised, the status of the trademark in the Indian Trademark Registry will be marked as “Objected”. The following are the steps to file a response in the event of a trademark objection:
The first step involves analyzing and studying the objection carefully, as any ambiguity in understanding can lead to incorrect filing of Trademark Objection Response.
The next step is to draft a trademark reply which should include the following:
If the response is accepted, the application will be processed further for registration and advertisement in the Trademark Journal. If it is not accepted, or there are additional clarifications sought by the Trademark Examiner, there would be a trademark hearing scheduled and the same will be notified with a notice.
If the outcome at the hearing is positive, the mark will be accepted and will be ordered to be published in the Trademark Journal.
In the event of a negative outcome, the Refusal Order will be passed, explaining the reason for the refusal. The applicant still would have the option to appeal the order by filing a review petition within 30 days from the date of the Refusal Order mentioning the grounds on which the order must be reviewed.
Once your 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 that period the mark will then proceed towards registration, and the Registration Certification is issued. If an objection is filed the opposition proceedings will take place as per the prescribed rules of the law.
If you have filed your trademark with us, we will intimate you that your trademark has been objected by the Registrar less than a month from the publication of the Examination Report containing the objection. If you are not a customer, it's best you contact us within a month from the publication of the report.
We give due importance to each case and our best lawyers will handle your case and prepare the documents. The response will be submitted.
If the Registrar does not accept your initial response, an interview is scheduled, where the arguments are presented in person. If the government is satisfied with the response, the objection will be lifted within 18 months.
How will I know my Trademark is objected?
The status of the trademark application can be tracked here.The status will be displayed as “Objected”.
What are the common reasons for Trademark Objection?
Trademarks are rejected due to one or more of the following reasons:
When should the response be drafted and submitted?
The response has to be submitted within 30 days from the date of issuance of the examination report.
What to do in case the deadline for the Trademark Objection response has been missed?
Vakilsearch professionals can help file extension thirty days after the deadline.
Should I submit a User Affidavit along with the response to an objection or examination report?
Yes. An affidavit mentioning the usage of the Trademark has to be submitted mandatorily.
What happens if one cannot attend the Hearing at the scheduled date?
The applicant may request a hearing adjournment if he/she is not able to attend it.
How long should I wait for the Hearing?
If your mark has been accepted, it will be advertised in the Journal within four months of raising an objection. If no such third parties raise trademark oppositions, the trademark will be registered in a couple of weeks.
After the Hearing, when will the Trademark be registered?
Trademark will be registered in 3-5 months, approximately.
What if the Hearing is not successful?
If it is not successful, there will be a Refusal Order passed that explains the reason for the refusal.
What happens if I run my business with a rejected Trademark?
It is always advisable to contest the rejected trademark and/or apply for a new trademark application, as the case may be. Trademark registration is mandatory for taking legal action against infringers.
We provide access to reliable professionals and coordinate with them to fulfill all your legal requirements. You can also track the progress on our online platform, at all times.
By handling all the paperwork, we ensure a seamless interactive process with the government. We provide clarity on the incorporation process to set realistic expectations.
With a team of over 300 experienced business advisors and legal professionals, you are just a phone call away from the best in legal services.
Korea based automaker, Kia has now a roadblock of Trademark Objection. The new model ‘Sonate may need a new name because it has been objected to. Kia is planning to launch its new model in the 2nd half of 2020.