Understanding Trademark Objection
Entities use several logos, designs, and a combination of symbols and words to identify its products and differentiating the same from its competitors. These logos and designs even help the consumer to identify the brand, quality and sometimes the origin of the product. Thus trademarks are the marks or symbols used by the company in its course of trade.
Trademark is one of the rights granted to protect intellectual property rights 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, and thus it protects it from any infringement.
What is Trademark Objection?
Once the trademark is applied for registration can be objected by a public, examiner or any other third party. It incurred during the initial stage of the trademark registration process when the examiner objects the trademark application due to several reasons. The objection cannot be said to be the rejection; however, registrar seeks further clarification or explanations about the logo and its legality.
The third-party can also object trademark in the capacity 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 time prescribed.
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:
if the applicant applies for trademark registration by filing the wrong form, the examiner can object.
Incorrect applicant name:
Examiner double-check for the correctness of applicant name, and the same shall tally from the name mentioned on PAN. It is advisable thus to double cross-check the spelling of an applicant.
Usage of deceptive words:
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.
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.
Once the objection is received, the applicant shall file a counter statement to the objection raised. Proper answer with supporting rule 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 draft reply along with supporting documents, shall be filed on Trademark e-filing portal online.
Authority when receiving the objection reply, will either approve or rejected as per its discretion. In case the authority accepts the reply, it will proceed further for registration and advertising 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.
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.
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.