Understanding Trademark Objection
Trademark objection must be handled cautiously and is considered as the most crucial stage of trademark registration. Trademark Registration application procedure includes trademark objection. Trademark examiner raises the objection on the grounds of finding during the examination procedure on certain goods. It should be handled with care, and convincing reply should be provided on the raised queries; otherwise, it can lead to the rejection of trademark application. The trademark should not be similar or identical to any third-party mark; it should be distinguished in every possible way.
Trademark is one of the rights granted to protect intellectual property in India. Rights covered under Trademark Act 1999 include protection, registration, and objection of a trademark with government authority.
Trademark Registration undergoes the following steps:
- Trademark verification/search
- Filing of application
- Formality inspection
- Publication in the journal
- Grant of registration
A registered trademark cannot be used by any third person without authority; thus it protects it from any infringement.
What is Trademark Objection?
Once the trademark is applied for registration, it can be objected by the public, examiner or any other third party. It happens during the initial stage of the trademark registration process when the examiner objects the trademark application due to several reasons. The objection cannot be the reason for rejection; however, registrar seeks further clarification or explanations about the logo and its legality.
The third-party can also object trademark in the name of public interest. Two ways when a public or third party can object the registration of trademark:
- When the trademark is published on Trademark Journal
- In case the applicant uses the mark before its registration
When the objection is received, the applicant shall file a comprehensive objection reply within a month or in the prescribed time period.
Reasons for Trademark Objections
Upon receipt of the application, the trademark examiner scrutinizes the application for its correctness. Objections can be received for the following reasons:
- Incorrect form
If the applicant applies for trademark registration by filing the wrong form, the examiner can object.
- Incorrect applicant name
Examiner double-checks for the correctness of the applicant’s name; the name must be similar to what is provided in PAN. Hence, it is advisable to cross-check the spelling of the name double.
- Usage of deceptive words
If trademark name or logo used is deceptive in nature or usage of any misleading term that gives a false description about the product shall be rejected.
- Offensive terms
Trademark shall not use any offensive term which can lead to the rejection of the trademark
- Insufficient information on goods or services
When the trademark application failed to mention necessary information, in brief, the trademark examiner may reject the application based on such grounds.
- Identical logo already registered
If the proposed trademark is similar or identical with the already registered logo, the examiner shall raise the objection stating the reason it can create confusion.
Respond to Objection Raised
Once the objection is filed, the applicant is given notice stating the ground of such objection. Once the objection is received, the applicant needs to follow the following steps thereafter:
- Receipt of Trademark Objection
Once the objection is received, the applicant shall analyze and study the objections carefully to leave no room for ambiguity.
- Objection reply
Once the objection is received, the applicant shall file a counter statement to the objection raised. Proper answer with supporting rules and documents shall be drafted, such as:
• An affidavit stating the usage of trademark
• Advertisement in the media
• Proof of availability of trademark online
Such reply along with supporting documents shall be filed on Trademark e-filing portal online.
Authority, when receiving the objection reply, will either approve or reject it as per its discretion. In case the authority accepts the reply, it will proceed further for registration and advertise the same in the trademark journal. However, in case it is not accepted, or authority sought for further clarification, the examiner shall schedule the trademark hearing and the same shall be notified through hearing notice.
- Trademark Journal
In case after the hearing, a trademark is accepted and granted, the same shall be published in the Trademark Journal. However, during the hearing, if the trademark is rejected, the authority shall pass the refusal order stating the reason in brief.
- Review Petition
Upon the receipt of refusal order, the applicant can file a review petition within 30 days of receipt of refusal order and shall specify the reason on which grounds the order must be reviewed.
After the trademark is published in the journal, it shall remain open for four months for the opposition. In case of no receipt of any opposition during the stated period, it shall proceed towards registration and thereafter registration certificate shall be issued that contains the logo registered along with the class in which it is registered.
What to do when the online status of the Trademark Registration application says “objected”?
- Get in touch with a trademark expert consultancy
- Obtain the examination report and go through it thoroughly. React to the report and must mention how and why objections are not tenable.
- Give a befitting reply to the objections raised within 30 days from the date of receipt otherwise application will be considered as abandoned. It is crucial to submit the reply within the stipulated time period and in an expedited manner.
- Frame your reply in a clear and precise manner. Make it strong enough with high precision that it could establish the distinctiveness of the mark, thus making it eligible for trademark registration.
What to do after filing Trademark Objection?
- Once a reply has been submitted against the objection raised via examination report, the Registrar will respond to the reply either by accepting the trademark or by conducting a hearing session.
- In case a hearing date is given, hire a trademark consultant or lawyer who will represent you and put up your side before the authority strongly.
- Contact Corpbiz; we have an experienced group of people who are expert in handling trademark objection.
Frequently Asked Questions
Following documents needs to be taken in hard copy while going to appear for hearing:
- Authority letter
- Affidavit for the usage of such trademark
- Examination report of the authority
- Trademark hearing notice received by the applicant
- Documentary proof showing the use of the trademark in business
- Proof of availability of trademark online
Trademark is the brand name or logo registered under intellectual property rights, and such a registered trademark distinguishes the products of an entity from that of its competitor. For instance, Cello has its registered trademarks that distinguish the renowned brand from some low quality or non-branded goods.
An applicant can keep track of status online through the official website of intellectual property through which a trademark registration application was filed. Status can be tracked at http://www.ipindia.nic.in/ using a reference number generated at the time of applying for a trademark.