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Soumya Bajpai
| Updated: 24 Oct, 2020 | Category: Trademark

How to Deal with Raised Trademark Objection in Examination Report?

Raised Trademark Objection in Examination Report

The response to a trademark objection in examination report can be submitted by the trademark applicant. It can be made through an agent authorized by a trademark applicant.

By the virtue of Form TM48 under the Trade Marks Act, 1999, the authorization is made by a Power of Attorney and the response is called Reply to Examination Report. It is required that an Applicant to reply within 30 days from a date of receipt of an examination report. This particular document is known as Trademark Examination Reply.

What is the Procedure to raise Trademark objection in examination report?

  • Once an application for the online Trademark Registration in India has been filed, a Trademark Registry reviews that application which is filed to ensure that it must be complete in all respects.
  • An application is reviewed by the competent authority being an Examiner in accordance with the provisions as specified under Trademarks Act and Draft Trademark Manual issued by the Trademark Registry.
  • After a complete review, an examiner will issue a positive report and pass on that application for an advertisement in the Trademark Journal which is further considered as Accepted and Advertised. However, at the time of Trademark registration process, a trademark is rarely accepted without an objection from the Trademark Registry.
  • At the time of verification by Trademark Registry, an Examiner will looks into the database of Trademark Applications received to check any identical or similar Trademark if already applied or is registered. If yes, then the same must be communicated to an Applicant by publication in an Examination Report.
  • Any observations and findings of an examiner that has been recorded in a report are known as the Examination Report. This is issued to an applicant seeking a clarification, explanations on the grounds of an application by way of filing a written submission or hearing.
  • Once an examination report will be issued by a Trademark Registry, an applicant can view and download the Examination Report. An applicant can then reply at a given time by himself or through his/her attorney.

Tracking the Status

After issuance of the Examination Report, if a status of an application on a portal will show as “Objected” then an applicant has to file reply to Trademark objection in Examination Report. The reply to an examination report must be made within time period of 30 days of receipt of an Examination Report.

In a case of failing to which Trademark Registry can abandon an application made i.e. an applicant has to give up any claim over a Trademark. Therefore, the status of an Application must be checked regularly in order to avoid any hassle or difficulty while claiming the rights over a Trademark.

Read our article:Know How to File Trademark Objection Reply

Why Examination Report is issued?

The grounds of Trademark objection can mainly be classified in the following manner. Those are as follows:-

List of Absolute Grounds of Refusal (Section 9)

The trademark which consist any of the following characteristics will be objected by the Trademark Registry for preventing the monopoly of Owner:

  • When a trademark is incapable of distinguishing any goods or services from one person to those of another person
  • When a trademark that indicates the quality, quantity, any intended purpose, values, geographical origin at time of production of the goods or rendering of the service or any other specified characteristics of the goods or services. For example, Delicious Snacks, etc.
  • When it consists exclusively of trademarks or indications that have become customary or has established practice of the trade,
  • When a trademark is of such nature which likely to deceive the public or cause confusion
  • When it contains or comprises of any matter which likely to hurt any  religious susceptibilities of any class or section of the people of India
  • When it comprises or contains scandalous or any obscene matter
  • When it is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950[1]

Relative Grounds of Refusal (Section 11)

  • The section restricts the Trademark registration, when possibility of confusion exists among the customers due to identification with an earlier trademark or similarity of goods or services. Trademark Objection may come on the ground if the Trademark (wordmark) is phonetically similar to the existing Trademark applied to the Registry.
  • There are few more grounds when a Trademark Registry will consider issuing Examination report such as visual similarity in a design, fonts, pattern and colour combination in logo as well as in wordmark applied for with an existing applications received by the Trademark Registry.

Other Common Grounds

Other Common Grounds

Response to Examination Report

  • An applicant himself or an attorney will file a response to an examination report against the raised Trademark objection in examination report within the stipulated time after the comprehensive analysis of the grounds of objection raised by the Examiner.
  • The reply must be drafted in the manner that construct supportive grounds and must able to give proper reasoning why a trademark applied and it further does not fail to comply with the provisions of the law.
  • When there is no format prescribed in respect of reply to examination report, being an applicant to the Registry one enjoys all the rights to deliver a clarification asked with proper reasoning. However, in addition to above one must not oversight certain factors that are generally accepted in the practise.
  • Further, it is recommended to consult professional for drafting and filing of Reply as they are experienced with the trademark provisions and cases that is taken care for filing the reply to satisfy the queries raised by the Registry in a best manner.

Post Filing the Reply

  • Once the Examination Report Reply is filed on the portal, the status will turned to “Objected” replacing the alert of “Awaiting to Reply.” Now, an applicant has to rest and wait for the further response from the Trademark Registry.
  • The examiner can either accept a response or schedule the hearing according to the satisfaction of the reply filed.
  • A reply filed and after hearing to the satisfaction of an examiner, the examiner will order for publication of a Trademark in Trademark Journal.
  • If the response/reply fails to satisfy an examiner, then an applicant can avail am opportunity of hearing before a Trademark Registrar, where he can present his submissions orally.

Conclusion

The trademark faces the objection during registration of Trademark on the ground of same or similar trademark which have been registered prior or applied before the Trademark registry by some third party. The Corpbiz team ensures that the client dos not face the Trademark objection. In case we have to face so we are ready to help in framing the reply and support in whole Trademark registration process.

Read our article:Understand briefly about Timeline for Trademark Registration Process in India

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Soumya Bajpai

Soumya has done LLB (Hons) and has a 2+years experience in writing. Her main interest is in reading judgments, new enactments and amendments taking around in law. She always strives to bring the best to work that she does.

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