Trademark

Trademark Objections: How to Respond under Section 11 of the Trademark Act?

calendar27 Mar, 2023
timeReading Time: 6 Minutes
Trademark Act

It is vital that companies distinguish themselves from competitors in the fast-paced business today. A trademark is a powerful asset that companies can use to accomplish this. A trademark is a unique symbol, word, phrase, or design that defines and sets one company’s products or services apart from those of other businesses. It is a priceless resource that can help establish a company’s reputation in the industry, strengthen its brand identity, and foster greater consumer loyalty. For companies of all sizes, from start-ups to global giants, trademarks are essential. They support companies in defending their intellectual property and guarding against the unauthorized use of their brand identification to mislead consumers or gain an unfair advantage. Also, a trademark can be licensed or franchised, generating additional cash for a company. In this blog, we are going to discuss how to respond Trademark Objections under Section 11 of the Trademark Act.

What is Trademark Objection?

A trademark objection is a legal challenge put forth by the Trademark Registrar against a proposed trademark application. The objection is made when the Registrar believes the proposed trademark does not adhere to the Trademarks Act, 1999’s standards. The Act recognizes two categories of grounds for objection; absolute and relative. Absolute grounds relate to the trademark itself, such as if it lacks distinctiveness or contains offensive or prohibited matter. On the other hand, relative grounds concern how closely the proposed trademark resembles a trademark that has already been registered. The applicant must file a counter-statement with the Trademark Registrar in response to the notice of objection when a trademark objection is made. To prevent further legal issues, it’s critical to reply to a trademark complaint quickly and effectively.

Objections under Section 11 of the Trademark Act, 1999

Relevant grounds for objection are cases where a proposed trademark is similar to an already registered trademark and may cause consumer confusion under Section 11 of the Trademark Act, 1999. In other words, the objection is brought up since a prior trademark already exists. Similar or identical goods or services could cover the earlier trademark, and it could be registered or awaiting registration.

It is significant to remember that the rejection of an objection does not always follow from the presence of a prior trademark. The strength of the prior trademark, the degree of similarity between the marks, and the nature of the goods or services covered are just a few of the variables that the Registrar will take into account. In order to eliminate any potential objections, it is crucial to carry out a thorough trademark search before submitting a trademark application.

Section 11 of the Trademark Act, 1999, specifies the relevant grounds for objection. These objectionable grounds include:

  1. Similarity to an existing trademark: The proposed trademark may not be registered if it is identical to or confusingly similar to an existing trademark in connection with identical products or services.
  2. Similarity to a well-known trademark: Even if the proposed trademark is not identical or confusingly similar to another well-known trademark, registration may be refused.
  3. Confusingly similar to a prior pending application: If the proposed trademark is deceptively similar to a trademark that is the subject of an earlier pending application, registration may be refused.
  4. Similarity to a trademark with a reputation: Even if the proposed trademark is not identical to a trademark that already has a solid reputation in India, registration may nevertheless be denied.

Trademark Examination Report

After examining a trademark application, the trademark office issues a report to the applicant called a trademark examination report. The report details the application’s current status and lists any concerns or issues that must be resolved before the application can proceed to registration.

The examination report is an essential step in the trademark registration process since it enables the applicant to spot any potential problems or objections that might come up. The report may list objections based on fundamental reasons (such as a trademark being too similar to another trademark already in use or having objectionable components) or relative grounds (such as a trademark being too similar to an application already pending). The applicant has the chance to reply to any concerns or objections mentioned by the trademark office after receiving the examination report and within the allotted time frame. The trademark application may only be accepted if a response is made in a timely manner to the examination report.

Trademark Objection Reply Process

The trademark office then examines a trademark application that has been filed. If any concerns are voiced, a trademark objection notice mentioning Section 11 of the Trademarks Act, 1999[1], will be sent to the trademark applicant. The following step in the trademark objection reply process is as follows:

  • Review the Trademark Objection Notice: It’s essential to thoroughly read the notification and comprehend the trademark office’s objections.
  • Do a Search: To assess the potency of the objection and to bolster the response, conduct a search for comparable trademarks.
  • Draft the Response: Based on the concerns put forth, a response should be prepared that addresses each complaint and is backed up by facts or legal reasoning.
  • Submit a response: Submit your response to the Trademark Registrar within the allotted time frame, together with the required supporting documentation.
  • Attend the Hearing: A hearing may be arranged to address the objection further if the Trademark Registrar is not pleased with the counter-statement.

Documents for Filing Trademark Objection Reply under Section 11 of the Trademark Act

You must prepare a trademark objection response to submit to the Trademark Registrar if you get a trademark objection notice. The following essential papers should be included in your response:

  • Reply to examination report: The reasons for objection should be addressed in this written answer to the trademark objection notice. Include in your response a thorough justification of how and why your trademark differs from any existing registered or pending trademarks.
  • Evidence of Prior Use: If you have used your trademark before the application date, you should provide proof of that use. Invoices, product labels, promotional materials, and any other paperwork that can substantiate your claim of earlier use are examples of this.
  • Proof of Distinctiveness: You must show that your trademark is distinctive and has taken on additional significance in the eyes of consumers. This could contain documentation of sales data, advertising costs, and media coverage.
  • Search Report: Before submitting a counter-statement, it’s crucial to search for comparable trademarks. You can find any potential conflicts using a search report and then address them in your counter-statement.
  • Power of Attorney: If you are working with a trademark lawyer, you must give them a Power of Attorney, allowing them to represent you.

It is significant to note that depending on the type of objection and the jurisdiction in which you are filing, different documents may be needed. For the purpose of ensuring that your response to a trademark objection is thorough and convincing, it is always advised to seek legal counsel from a trademark attorney.

Timelines for Filing a Response

Within 30 days of receiving the examination report, the reply must be sent with supporting documentation. Also, the response to the trademark examination report should be written with legal competence, including decisions in cases with similar issues as well as rulings by tribunals, courts, and international authorities.

Extension of Time to File a Trademark Objection

The application shall be deemed abandoned unless the reply is submitted within 30 days following the report. Time is of the essence when it comes to filing an objection reply. You could require an extension of time in some circumstances in order to submit your objection reply. You must submit an application for an extension to the Trademark Registrar in order to ask for an extension of time to submit your objection reply. The following details ought to be included in this application:

  • The reason(s) for asking for the extension.
  • How much time is being asked for the extension?
  • Any further details or supporting documentation for your request.

The Registrar has the authority to accept or reject your request for an extension. As a result, it’s critical that you give a good reason for your request and submit your application on time. A new Power of Attorney is also necessary if the reply to the examination report is to be sent via a different trademark agency. After the filing is complete, an objection reply must be written.

Consequences of not responding to the objection

The trademark application may only be abandoned if you respond to the objection within the allotted time frame. This implies that the trademark applicant will no longer have any rights to the mark, and the application will be deemed withdrawn.

Conclusion 

In conclusion, addressing Section 11 of the Trademark Act, Trademark Objections is a crucial step in the trademark registration procedure. Refrain from reacting to objections within the allotted time frame to avoid the trademark application being abandoned, costing time and money, harming the business’s reputation, and increasing the risk of trademark infringement. So, it is crucial to comprehend the reasons behind objections and swiftly respond to them with the required paperwork and supporting documentation. A trademark lawyer’s guidance might be useful in navigating the application procedure and efficiently handling objections. Businesses can safeguard their trademarks and gain a market advantage by reacting to objections in a prompt and efficient manner.

Read our Article:How To Respond To Trademark Infringement?

Request a Call Back

Are you human? : 1 + 6 =

Easy Payment Options Available No Spam. No Sharing. 100% Confidentiality