Trademark

Grounds for the Refusal of the Trademark Registration

calendar22 Nov, 2019
timeReading Time: 5 Minutes
Trademark registration

Trademark is a type of intellectual property that consists of designs, recognizable sign, expressions so that you can distinguish it from your competitors. It is one of the ways by which you can prevent your ideas and thoughts from being stolen. You can register for a trademark under the Trademark Act, 1991. In India, the Trademark is registered by the Controller General of Patents, Designs and trademarks. Ministry of Industry[1] and Commerce. After the brand or logo is trademarked, you will be assigned with a registered TM Number within a period of three days. In this article we described about Reasons behind trademark Registration Rejection.

What are the things that can be trademarked?

Through the Trademark, you can ensure that your goods and services have unique branding in the market.

  • Names and logos of the brands.

For example, the logo of the brand Adidas is trademarked.

What are the different Trademarks symbols?

Different trademark symbols are used by the Controller General of Patents which reflects the status of the trademark registration.

  • TM Symbol – This symbol is used for the product and is used when the Trademark is nor registered. The business entity can use the” TM” symbol. The primary purpose of using this symbol is to make the people aware of this brand.
  • SM Symbol – This symbol is used for the services and is used when the Trademark is nor registered. The business entity can use the” SM” symbol. The primary purpose of using this symbol is to make the people aware of this brand.
  • R Symbol – This symbol is used when the Trademark is already registered, and you have received the Certificate of Registration for the Registrar.

Documents required for the Registration of Trademark

Here is the list of document required for the Trademark Registration-

  • A soft copy of the Trademark
  • For an Individual/HUF (Hindu Undivided Family)
  • Identity proofs such as PAN Card.
  • Business Registration Document.
  • In the case of Company/LLP
  • Shops Establishment License
  • Incorporation Certificate
  • Address proof of the Company
  • In case of Partnership Firm
  • Partnership Deed

Procedure for Trademark Registration

The procedure for trademark registration is given as below:

Trademark your “Brand Name”

You need to select a catchy brand name which could entice the customers and is different from other brand names.

Apply for the trademark application on the portal:

After this, you have to submit the following documents while filing the Trademark application.

Business Registration

The proofs which are provided vary according to the business types:

  • Identity proof of the Company’s Director.
  • Address proof of the Company’s Director.
  • Address proof of the Company
  • Soft Copy of the Trademark
  • Evidence of the Claim of the proposed mark that can be used in another country.
  • Power of Attorney signed by the applicant.
  • Apply for the Brand name Registration

The concerned registrar will check whether your brand name is unique and not non-offensive.

Publish the Brand name in the Indian Trademark Journal

The registrar of the TM office will issue the Brand name of yours in the India Trademark Journal. If there is NO Objection within three days from the date of publication, then you can proceed ahead.

Trademark Registration Certificate

Finally, the registrar will issue the Trademark Registration Certificate.

Reasons for trademark application Rejection

  • Use of Generic Terms
  • Use of Offensive strings
  • Use of Patriotic marks
  • Use of Descriptive terms.
  • Use of Obscene/Misguiding terms
  • Use of Surnames as trademarks
  • Using Brand names which are famous in other countries
  • Not hiring a trademark lawyer

What if the trademark application gets rejected?

If the Trademark Registration gets rejected by the applicable registry on the grounds mentioned in Section 9 and Section 11 of the Trademark Act, then you can appeal to the Appellate Board against the decision of the registrar of the trademark registry. You must request within the three months of Trademark Registration Rejection. An appeal could be filed even after three months if some issues were there.

Reasons for trademark application Rejection

A registered trademark helps the trademark owner prevent the unauthorized use of the mark and create a unique intangible for the product. If the trademark application is accepted and the mark is registered, then the efforts spent on the branding are protected. But in some cases, the TM is not registered due to some reason.

Here we will discuss the reasons for the same:

  • Generic Terms Those trademarks which directly represent the particular product activity or the actual business idea are most likely to get rejected because of the general term used. For, eg, a car manufacturing company wants to register its brand name by putting the car manufacturing units at its end; then there is a high chance the registration will be rejected. In day to day advertisements, we always see the brand name as Hyundai, Toyota, Maruti Suzuki. You must have observed that these brand names end with the term car ending on it.
  • Offensive Strings – You cannot use offensive strings as they can harm the sentiments of a particular religion, caste, or community. These trademarks have higher chances of getting rejected by the office.
  • Copying an existing trademark of another Trademark which is identical to an existing brand often confuses the customer like us from the original Trademark. It generally happens due to a lack of research done by the owner. You must check the trademark database before finalizing a trademark so that you can form a unique trademark.

For, e.g., if a company wishes to register the brand name as Adidas, then there is a high chance of rejection as it represents the Brand name ADIDAS.

  • Patriotic marks – The trademarks such as the official names, national emblem, flag, an animal image of individual states and international organizations are protected under National Regulations of their respective countries and hence cannot be trademarked.
  • Descriptive terms – Qualitative terms like HOLD, COLD, and WISE cannot be trademarked, and there is a higher chance that they will get rejected. For e.g., You cannot use the brand name “hot” Coffee for promoting a hot coffee.
  • Obscene/Misguiding terms – Use of slang words, disparaging, provoking terms or repulsive terms are often rejected by the registrar of the TM office.
  • Using Brand names which are famous in foreign countries – The trademark law of our country follows the cross border concept, if you are using a trademark that is popular in foreign countries, then there is a higher chance of getting rejected from the original trademark owner.
  • Not hiring a trademark lawyer – Always hire a trademark lawyer before deciding a brand name to avoid rejection. Further, it also saves time.

In Shalimar Chemical Works v. Deputy Registrar, the appellant’s trademark for “CHEF” has been used in reference to various goods specifically edible oil, species, edible products and  all this had already acquired special uniqueness simply by the way of extensive sale and promotions.

In the case of Amritpal Singh v. Lal Babu Priyadarshi the registration for the word RAMAYAN was refused because of the reason that it was not capable to distinguish the goods of the applicant and that it was most likely to hurt the religious values and sentiments of a particular class of society.

What to do When your Trademark Application has been Rejection?

If you have applied for trademark registration and in case it gets rejection by the applicable registry on the grounds as mentioned in Section 9 and Section 11 of the trademark act, then you have the right to make an appeal to the Appellate Board against the registrar of the trademark registry. Also, you need to appeal within the three months of Trademark Registration Rejection. You can also file the appeal even after three months if some issues were there.

Conclusion

It is always a better idea to hire a trademark lawyer at the very beginning for the registration of your Trademark as they will verify the brand, logo name and suggestions of yours before you start your business.

Read our article:10 Invaluable Advantages of Trademark Registration

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