Grounds for The Refusal of Trademark Application
Trademark refers to a “brand” or “logo.” It is a type of intellectual property that consists of a recognisable sign, design, or expression of a particular source that one can use to distinguish it from those of competitors. Through trademark registration, one can protect its brand or logo by restricting other people from using it. There are various reasons for refusal of trademark application.
As it helps a business to invest in its branding and ensure that its goods and services are have unique branding in the market. In India, we have the Trade Marks Act which governs the trademark filing and registration. It provides better protection of trademarks and registration and to prevent it from illicit use. After trademarking a brand or logo, a registered TM number is assigned within a period of three days from the trademark department.
Here in this article, we will discuss about trademark and refusal of trademark application.
What can be trademarked?
- Names, words, numbers, images, sounds can be trademarked. For e.g., in the case of images, the brand logo of Adidas showing three ascending stripes comes under trademark.
- Any person or business who is the owner can apply for a trademark including individual, company, proprietor, and society. It is generally preferable to apply for the trademark as an individual because, in the case of a proprietor or company, the trademark will become invalid if one changes its name.
Different Trademark symbols
There are different trademark symbols like
TM symbol – TM symbol means the Trademark symbol. Any business entity can use the trademark symbol like “TM” until the registration procedure is complete. This helps the public in becoming aware about the brand.
SM Symbol – SM symbol means Service mark, but this is used for service like providing education. TM is used for a product, and SM is used for service.
R symbol – R symbol can only be used when the mark is registered, and the Trademark Registrar has issued the Certificate of Registration.
Reasons for refusal of trademark application
A registration of trademark helps the trademark owner prevent the unauthorized use of the mark and create a unique intangible for the product.Once the Registrar accepts the application, the mark is registered. The Registrar rejects the application. There are various reasons for refusal of trademark application. Here we will discuss the reasons for refusal of trademark application-
- Generic Terms – Trademarks which directly represents the particular product activity or the actual business idea are most likely to get rejected because of the general term used. For e.g., 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 rejection of application. In day to day advertisements, we always see the brand name as I nova, Volkswagen, Maruti. We never see the term car ending with it.
- Offensive Strings – Trademarks that uses offensive strings which can harm the sentiments of a particular society, religion, caste, or community are most likely to be rejected by the TM registration office.
- Copying an existing trademark – Any trademark which is identical to an existing trademark confuses the customer from the original or existing trademark. This generally happens due to a lack of research. One must check the trademark database before finalizing a trademark. By doing extensive research of the existing trade names, one can form a unique, uncommon, and exclusive trademark. Many persons and businesses do not perform research as it is time-consuming. For, e.g., if a company wishes to register the brand name as NIKEE, then it will surely be rejected as it seems to copy the Brand name NIKE which can mislead the customer’s eye.
- Patriotic marks – Trademarks that contains official names, national emblem, flag, an animal image of certain states and international organizations can not be trademarked as they contain elements that are protected under National Regulations.
- Descriptive terms – Qualitative terms can never be used for the trademarking. Terms like BEST, COLD, and SMART cannot be trademarked and are likely to be rejected for being descriptive. For e.g., We cannot use the brand name “cold” Slice for promoting a cold drink.
- Obscene/Misguiding terms – Any such use of slang words, disparaging, provoking terms or repulsive terms and immoral terms are rejected by the registrar.
- Surnames as trademarks – One should not choose the brand name as the trade name for their products as their high chances of getting rejected by the TM registration office.
- Using Brand names which are famous in other countries – The trademark law follows the concept of cross border, if one uses a trademark that is popular in other countries, then there are chances of getting objections from the original trademark owner.
- Not hiring a trademark lawyer – It’s a wise option to hire a trademark lawyer before deciding a brand name in order to avoid rejection. Further, it also saves time.
What to do when the trademark application has been rejected?
If a person has applied for trademark registration and the Registrar rejects the application on the grounds under Section 9 and Section 11 of The Trademark Act, 1999 then the applicant has the right to make an appeal to the Appellate Board against the decision of the registrar of the trademark registry. One must appeal within the three months of rejection of the trademark. An appeal can be filed even after three months if some issues were there.
Getting trademark registration is a very strenuous task for an entity, and moreover, it takes a very long time to complete the registration. So it’s a wise option to hire a trademark lawyer at the start so that it can save your time.
For anything related to trademark registration and objection, contact us at LawyerInc.