Trademark

Trademark Objection and Trademark Opposition: Know the Potential Differences

calendar19 May, 2021
timeReading Time: 7 Minutes
Trademark Objection and Trademark Opposition

Businesses must have trademarks because they act as distinctive indicators of the products or services and help in setting them apart from their competitors in the same marketplace. Trademarks are the identifiers that consumers can use to recognize and differentiate one product or service from another. They can be words, symbols, logos or even sounds. For enterprises, the trademark registration procedure can cause difficulties. To make sure the proposed trademark is not already in use or registered by another party, a trademark search is carried out. If a conflicting trademark is found, it can lead to a legal dispute that can harm the business and its image. Third parties, in the form of opposition or objection, can also challenge the trademark registration procedure. Scroll down to check the difference between Trademark Opposition and Trademark Objection.

What is Trademark Opposition and Trademark Objection?

Following is the meaning of Trademark Opposition and Trademark Objection:

Trademark Opposition

A trademark opposition is a legal challenge filed against the registration of a trademark. A third party that believes that the proposed trademark conflicts with its current trademark can file for trademark opposition. By filing for trademark opposition, one can stop the registration of a trademark that can dilute or confuse an already-registered mark or create confusion. 

Trademark Objection

In the course of the trademark registration procedure, a trademark examiner can formally object to a trademark application. When the examiner determines that the trademark application does not satisfy the criteria for registration or clashes with already-registered trademarks, the objection is often lodged. When a trademark objection is brought forward, the applicant is informed of the objection and given a chance to refute it. To address the concerns mentioned in the objection and defend the registration of the trademark, the applicant can offer arguments and supporting data.

Who Can File a Trademark Opposition?

Any person who has a legal interest in the matter can file a trademark opposition. This includes the owner of the existing trademark who thinks that the proposed trademark infringes upon their rights or interests, whether they are already an owner of the trademark or an unregistered trademark with a reputation or both. 

The legal interest requirement for filing a trademark opposition is broad and can include any person who has a reasonable apprehension of being affected by the registration of the proposed trademark. Therefore, a competitor in the same industry or a member of the public who believes that the proposed trademark may cause confusion or deception can also file a trademark opposition.

Steps Involved in the Trademark Opposition

There are various steps in the legal process of opposing a trademark. The general steps in the trademark opposition process are as follows:

  1. Filing an opposition: A notice of opposition must be sent to the appropriate trademark office as the first step in the opposition process for a trademark. The grounds for the opposition should be stated in the notice of opposition, along with supporting documentation.
  2. Response from the trademark applicant: The trademark applicant has the opportunity to reply to the objection once the notice of opposition has been submitted by submitting a counter-statement. The counter-statement needs to address the reasons for resistance and offer proof in favour of the trademark’s registration.
  3. Evidence period: Both parties have time after the counter-statement is filed to provide evidence to back up their claims. This evidence can consist of witness accounts or other related document proofs etc.
  4. Hearing: In some circumstances, a hearing in person will be arranged to allow both parties to submit their arguments and supporting documentation. Depending on the jurisdiction, the hearing could take place in front of a hearing officer or a tribunal.
  5. Decision: The trademark office will make a decision about the opposition following the evidence period or the hearing. The decision might be to approve the trademark for registration, reject the trademark registration, or approve the trademark registration subject to restrictions or requirements.
  6. Appeal: If either party disagrees with the trademark office’s ruling, they are able to take their case to a higher court or tribunal.

When submitting an application for trademark registration, businesses should get legal advice and perform a comprehensive trademark search to find any potential conflicts and reduce the chance of opposition. The trademark opposition procedure can be complex and time-consuming.

Possible Outcomes of a Trademark Opposition

Depending on the jurisdiction and the particulars of the case, there are several possible outcomes of trademark opposition. Among the frequent consequences of trademark opposition are the following:

  • Trademark registration is granted: If the trademark office determines that the objection lacks validity, the trademark can move forward with registration. After the trademark has been registered, the applicant will have the only right to use it in connection with the products or services listed in the registration.
  • Trademark registration is denied: If the trademark office determines that the objection has a basis, the trademark registration request will be denied. The trademark cannot be registered by the applicant, and it cannot be protected. The applicant can choose to change the trademark and reapply for registration.
  • Registration of a trademark subject to restrictions or conditions: The trademark office may, in some circumstances, agree to specific restrictions or conditions before allowing the trademark to move forward with registration. For instance, the trademark could only be permitted to advance to registration for a selective products or services, or it might be permitted to proceed to registration along with a disclaimer.

Who Has The Right To Object To A Trademark?

Only a trademark examiner at the relevant trademark registry where the application was submitted can make a trademark objection. When a trademark application does not adhere to the conditions for registration or clashes with already-registered marks, the trademark examiner lodges an objection.

The responsibility of the trademark examiner is to make sure that the trademark application complies with all applicable trademark rules and regulations and doesn’t violate the rights of any already-existing trademark owners. The examiner is qualified to determine if the trademark application satisfies the standards for registration and whether there are any trademarks that could conflict with and prohibit the trademark from being registered.

Grounds for Trademark Opposition and Trademark Objection

Following are the grounds for Trademark Opposition and Trademark Objection:

Grounds for Trademark Objection

A trademark objection can be raised by a trademark examiner if the trademark application does not meet the requirements for registration or conflicts with existing trademarks. The following are the common grounds for raising a trademark objection:

  1. Non-compliance with formal requirements: The trademark application may not comply with the formal requirements of the trademark office, such as incorrect filing, missing documents, or incomplete information. 
  2. Lack of distinctiveness: The trademark application can be accepted if the trademark is considered to be too generic or descriptive, as it may need to be more distinctive to identify the goods or services of the applicant.
  3. Conflicts with existing trademarks: The trademark application may conflict with an existing registered trademark, either in terms of the trademark itself or the goods or services for which the trademark is registered.
  4. Offensive or prohibited content: The trademark application may be refused if the trademark is considered to be offensive, scandalous, or contrary to public policy.
  5. Geographical indication: If the trademark application contains a geographical indication that is protected by law, such as a name of a country, region, or city, the trademark application may be refused.
  6. Deceptive or misleading: If the trademark application contains information that is deceptive or misleading to the public, the trademark application may be refused.
  7. Non-use of the trademark: If the trademark has not been used in commerce for a specified period, the trademark application may be refused.

Grounds for Trademark Opposition

  • The trademark is the exact same as or confusingly similar to an already registered trademark.
  • The trademark is merely descriptive.
  • The trademark lacks anything distinguishing about it.
  • The trademark is standard usage in the present terminology or in the accepted business practices.
  • The trademark registration application was submitted in bad faith.
  • The mark is illegal or prohibited by the law.
  • The trademark has a high likelihood of misleading or confusing the public.
  • The trademark contains content that could offend a group or part of individuals because of their religious beliefs.
  • In accordance with the 1950 Emblem and Names Act, the trademark is forbidden.

Steps involved in the Trademark Objection process

The trademark objection process typically involves the following steps:

  1. Notification of objection: The trademark examiner notifies the applicant of the objection raised against the trademark application. The notice may include the grounds for objection and a deadline for the applicant to respond.
  2. Review of grounds for objection: The applicant reviews the grounds for objection and seeks legal advice if necessary. The applicant may also conduct a trademark search to evaluate the likelihood of success in overcoming the objection.
  3. Preparation of response: The applicant prepares a response to the objection, addressing the grounds for the objection and providing evidence to support the registration of the trademark. The response can include legal arguments, evidence of use, or amendments to the trademark application.
  4. Submission of response: The applicant submits the response to the trademark examiner within the deadline provided. The response should be comprehensive and address all the grounds for the objection raised by the examiner,
  5. Review of response: The trademark examiner reviews the response and evaluates whether the grounds for objection have been adequately addressed. The examiner may accept the response and approve the trademark application or request further information or amendments to the trademark application. 
  6. Decision on trademark registration: If the response is accepted, the trademark application may proceed to registration. If the response is not accepted, the examiner may issue a final decision to refuse the trademark application.
  7. Appeal or review: If the trademark application is refused, the applicant may appeal the decision or seek a review of the decision. The applicant may need to provide further evidence or make amendments to the trademark application to overcome the grounds for objection.

Comparisons between Trademark Opposition and Trademark Objection

Following is the comparison between Trademark Opposition and Trademark Objection:

  1. Meaning: A trademark opposition is a formal legal action brought by a third party opposing the registration of a trademark, whereas a trademark objection is a formal objection submitted by the trademark examiner during the inspection phase of a trademark application.
  2. Timing: Trademark oppositions take place after the trademark application has been published in the Official Gazette, whereas trademark objections happen during the examination process.
  3. Nature: Trademark oppositions are based on substantive reasons, such probability of confusion or dilution, whereas trademark objections are based on administrative or procedural grounds.
  4. Parties involved: Trademark oppositions are often started by third parties, such as rival businesses, other trademark owners, or members of the public, whereas trademark objections are typically started by the trademark examiner. 
  5. Result at the end: The trademark application will be rejected if a trademark objection is not overruled, and the trademark registration will be rejected or revoked if a trademark opposition is successful.
  6. Scope: While trademark oppositions can have an effect on the larger market and other comparables, trademark objections are restricted to the single application under review.
  7. Procedures: There are differences between replying to a trademark opposition and a trademark objection. When there is an objection, the applicant can react by offering proof or justifications to disprove it, but when there is an opposition, the parties go through a formal legal process.
  8. Cost: Legal expenses for handling trademark objections are often covered by the trademark application procedure. In contrast, trademark oppositions can be more expensive, need legal counsel, and be more time-consuming to settle.

Conclusion

To sum up, trademarks are essential for safeguarding a company’s intellectual property and brand identity. Yet, there is a chance for opposition or objection, and the trademark registration procedure can be difficult and complicated. Although a trademark objection is a notice of initial denial given by the trademark office if the trademark application does not fulfil the legal conditions for registration, trademark opposition is a legal action where an interested party challenges the registration of a trademark. The trademark application may be rejected, changed, or allowed to proceed to registration in response to either opposition or objection.

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