Trademark provides a unique identification to the brand and makes it different from other product available in the market. The identification can be word, logo, sound, or a photograph. So, protecting this unique identity can be crucial. Once, applicant files its application for Trademark, Examiner after examining the application, can object the application. This means Examiner has raised Trademark objection against the application. Further, the applicant has the option of filing Trademark Objection Reply to protect the unique identity he is looking for his brand.
Let’s go further and read about Trademark objection, reasons, and how to file Trademark Objection Reply.
What is Trademark Objection Reply?
Trademark objection reply means the response made by the applicant on trademark objection raised in the examination report. Respond to objection shall be made within the stipulated time. Applicant should make a comprehensive analysis of the ground of objection raised by the Examiner.
What is Trademark Objection?
After filing the application for Trademark Objection, when applicant checks the status of Trademark in Indian Trade Mark Registry website, it shows ‘Objected’. This means that trademark examiner has raised the objection against the trademark in the examination report.
Under Section 9 and Section 11, registrar after analyzing the application can raise the objection against the application.
When Trademark Objection can be raised?
Under section 9, Trademark objection can be raised if the registrar is of the opinion that mark is descriptive of goods, generic or indicating quality or nature of goods. Below mentioned are the two specific reasons for trademark objection;
- Similar trademark already exists;
- Trademark application contains wrong/incomplete information.
A trademark application should be filed without any errors or false information. In registrar found any incorrect information like wrong applicant name, wrong address proof, mistakes likely attract the objection.
1. Incorrect details in Trademark form
When the applicant furnishes the wrong details related to applicant name, or principal business place or any other relevant information. False information is likely to raise a trademark objection.
2. Wrong filing of a Trademark form
The objection can be raised on the incorrect form filed by the Examiner. If the trademark application is filed by the trademark attorney or agent, then it’s mandatory to file TM-48 form along with the trademark application.
Other grounds of the objection of trademark;
- Deceptive Mark
- Lack Distinctiveness
- The existence of Identical Trademark
- False specification of goods or services
- Offensive or obscene words
Read our article:Basic Definition of Trademark Registration, Objection and Assignment
How to respond to a Trademark Objection?
Objection;
At the time of the trademark registration process, an objection can occur when the third party objects the registration of the trademark. If a person wants to object the trademark registration, they don’t need to show any personal damage. But they may do this in the capacity of public interest.
What should be included in the response of Trademark Objection?
- Systematically answer to the objections being raised by the registrar;
- Next, attach the supporting case laws to support your reply of the trademark office; Supporting documents to prove the uniqueness of your trademark;
- An affidavit shall be filed along with the reply, which shows that the trademark is unique and is associated with the goods and services.
While drafting the reply, the applicant should keep an eye over the cited objection raised. A good reply will help in getting a chance of hearing, which can accelerate the trademark objection reply process.
In furtherance to the reply process, good IPR attorney focuses on every small detail of the objections raised. If the applicant fails to satisfy the trademark office from his reply, he even can make his submission orally. Such hearing is conducted by Assitance registrar, or by Senior Examiner of trademark.
Ways where the third party or public get a chance to object the trademark registration in the interest of the public;
- When the mark is published in the Trademark Journal;
- Where the applicant has used the mark before the registration ;
The applicant will be provided with the notice of rejection along with the Grounds of objection;
- On the objection, the applicant should file a counter statement;
- The counter must be filed within the date of 2 months of receiving the objection notice of objection;
- If the applicant is failed to file the objection within 2 months, the status of the application to Abandoned.
On counter filing, the registrar will call both the parties for hearing. After this, the registrar will rule based on the submission. If the rule is based on the submission of the applicant, then his trademark will be registered. In the case where the rule favours the opposing party, trademark will be removed, and the application of applicant will be rejected.
Further, the applicant has the right to file an appeal to the Intellectual Property Appellate Board (IPAB):
The said appeal must be filed within 3 months of the order given by the registrar.
- If the applicant fails to file the appeal within the given time frame, he must furnish his reason for the delay;
- If IPAB (Intellectual Property Appellate Board)[1], accept the reason for delay, the appeal will be further posted for hearing;
- Applicant must file the appeal according to the rules mentioned in Trade Mark (Applications, Appeals and Fees to the) Rules (hereinafter referred to as Trademark rules).
- An appeal must be filed in the case when the application for registration was for one class. As mentioned in trademark rules, you have to use Form-2 In this case, the fee for filing will be 5,000 rupees.
- Where the application was used for more than two classes, the appeal has to be filed in form -3. The filing charges, in this case, will be 10,000 rupees.
- Applicant must verify all the appeal application.
- Further, application must be sanctioned by the Deputy Registrar on the same sate when applicant presents the application.
- On the findings of any defects, Deputy Registrar will give the notice of the same.
- Applicant must submit the correct application without any defect within 2 months.
- If the applicant fails to do so, the status of the application will stand abandoned.
- Once the Deputy Registrar finds everything okay, the registrar will register the case and will allow the serial number.
On registration of a case, IPAB will hear the case. IPAB will decide the place of on the basis of jurisdiction under which the case falls according to rule 2(m). Date of the hearing will be fixed of the case. The hearing will be as follow;
- The case will be decided on the basis of submissions made by the two parties.
- In a case where the party fails to appear on the hearing, the IPAB has right to;
- Rule on the merits of the case
- Give an order ex parte (in the absence of one party)
- Dismiss the case
On dismissal of the case or on ex parte decision, the applicant can file the petition on earlier order with the 30 days of the previous ruling.
The order passed by the IPAB will stand, and the case will be heard. If the order passed by IPAB aggrieves the applicant, he still has the option to file an appeal in the corresponding High Court. Further, the applicant can still file a request to the Supreme Court of India.
Conclusion
The applicant needs not to worry if his trademark gets rejected. By filing a Trademark objection reply, the applicant saves his time and brand. Applicant should make sure trademark objection reply within the prescribed time frame, to avoid the application from getting abandoned. At Corpbiz, our trademark expert team help you in filing the trademark objection reply, to save your time and money.
Read our article:Patent in India: Registration and Filing Process
