Trademark Objection

Trademark Objection - An Overview

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.

Benefits Of A Trademark Objection

Filing a prompt response to a trademark objection, along with supporting evidence has the following benefits.

• The existing trademark will be saved from being abandoned or rejected, and be considered for further processing.
• When the stated response cites the uniqueness of the mark, the possibility of it getting registered is high, thereby protecting the brand against infringement.
• Some companies start using the ™ mark while still waiting for the Trademark registration report. In case of objection it is better to file a trademark appeal against the registrar rather than file a new application.

Checklist For A Trademark Objection

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:

Filing Of Incorrect Trademark Form

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.

Incorrect Trademark Applicant Name

Trademark has to be filed on the true name of the applicant and double-checked for the right spellings.

Usage Of Deceptive And Offensive Terms:

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.

Insufficient Information On Goods/Services:

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.

Existence Of An Identical Mark:

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.

How To File A Trademark Objection Response - A Detailed Process

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:

Step 1: Analyzing 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.

Step 2: Drafting Of Trademark Objection Response

The next step is to draft a trademark reply which should include the following:

• A proper answer to the objection raised with supporting rule of law and precedents and judgments supporting the case
• The differences between the conflicting mark and the mark of the applicant.
• Other supporting documents and evidence that validates the response.
• An affidavit stating the usage of the trademark in the applicant’s website and social media channels; advertisement in the media; publicity material; availability of trademarked products on e-commerce sites, etc. along with the documentary proof for the same
• The response draft is then filed online on the Trademark e-filing portal.

Step 3: Trademark Hearing

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.

Step 4: Publication In The Trademark Journal

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.

Step 5: Registration

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.

How Vakilsearch Helps With The Trademark Objection Process

Intimation

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.

Our Legal Team

We will put you in touch with our lawyers, who will understand your case and frame the correct response and affidavit (if required). The response will be submitted.

Handling Objections

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.

Documents required

• Authorization letter
• Affidavit of usage
• Examination report
• Trademark hearing notice
• Documentary proof of Trademark in commercial use.
• The duly appointed applicant or the attorney has to appear before the authorities, on the scheduled date

Why Vakilsearch

Access To Experts

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.

Realistic Expectations

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.

300-Strong Team

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.

FAQs on Trademark Objection