Grounds for Trademark Objection and Solution

Trademark objection is one of the primary stages in the registration process of a trademark. Trademark shall be applied with all the required due diligence, so chances of objection raised by the department shall be avoided. Even if an objection raised by the department under prescribed sections of the Trademark Act,1999, a suitable reply for the same can save the application from being abandoned or rejected. Let us study and understand the concept in detail.

WHAT IS A TRADEMARK?

According to the section 2 (zb) of Trademarks Act 1999, Trademark refers to a mark capable of being represented graphically and which enables a person of distinguishing the goods and services of one from other and may include the shape of products, their packaging and combination of colours. In simple words, Trademarks are visual representations which could be in the form of symbols, designs or words which help a person in recognizing or distinguishing a particular brand or a company.

TRADEMARK OBJECTION

The process of registration of the Trademarks registration begins when an applicant applies for registration of a Trademark. The Trademark used must be distinct, unique and should not be identical or similar to the existing Trademarks in the Trademarks registry. When an applicant applies for registration of Trademark, the examiner then examines the application. If the intended Trademark violates rules and laws of the Trademarks registration, then the Trademark registrar may object. Therefore due care and caution must be exercised while filling the application for the registration of Trademark or else it may result in wastage of both money and time. In the event of Trademark objection, a comprehensive reply is a must. A unique Trademark is vital for a brand’s identity and good reputation. Therefore even in the case of Trademark objection, the response must be prompt. This medium will help in saving the application from being rejected or abandoned.

WHAT ARE THE GROUNDS FOR TRADEMARK OBJECTION?

A Trademark can be objected under various sections of the Trademarks Act 1999 on absolute or relative grounds. These are the sections on the basis of which an objection can be raised:

According to the section 9 (1) of the Trademarks Act, 1999, a Trademark

• (a) which lacks any distinctive character, that is to say, not capable of distinguishing the goods of one person from the other;
• (b) which may consist exclusively of marks or indications which may cater to trade to indicate the kind, quality, quantity, intended purpose, geographical origin, values, at the time of production of goods, shall not be registered. A mark can’t be registered as a trademark if it is of nature as to deceive the public, or if it contains scandalous or obscene materials;
• (c) or which consist exclusively of marks or indications which has become customary in the current language or the bonafide and established practices of the trade.

According to section 9 (2) & 9 (3) of the Trademark Act,1999, a trademark registration is ground for refusal or objection
• If it of such nature as to deceive the public or cause confusion, or contain scandalous or obscene matter. If someone religious sentiments likely to hurt by the mark or the shape of goods which results from the nature of the goods themselves.

◦ Under section 11 (1) of the Trademarks Act, 1999, a trademark shall not be registered on relative grounds if it’s identical or similar to a trademark registered in the Trademark registry.

◦ According to the section 11 (2) of the Trademarks Act, 1999, if a Trademark is identical to the earlier registered trademark or the goods description of the instant mark and the similar/identical mark is different but the later one is well-known mark in India. ◦ In section 11 (3) of the Trademarks Act 1999, a Trademark shall not be registered if or to the extent that its use is liable to be prevented

(a) by any law, in particular, the law of passing off protecting an unregistered trademark used in the course of the trade or;
(b) by virtue of law copyright. A Trademark is liable to be objected by the Trademark registrar if the conditions mentioned above are fulfilled.

WHAT TO DO IN CASE OF TRADEMARK OBJECTED?

Whenever an application for registration of a trademark is objected, the status of the intended Trademark will show as “objected” and “Awaiting for reply to the Examination Report” . In such a situation, prompt action is required on the part of the applicant or else it could be rejected or abandoned. The following steps are necessary to prevent the application from being rejected;

• Analyze under which section of the Trademark Act,1999, an objection has been raised.
• Draft a trademark reply by justifying the Trademark applied for by providing the necessary documents and supportive arguments related to the same.
• Preparation of the response must be within 30 days from the receipt of such status prescribed under the Trademarks Act 1999. Failure to file the timely reply may consider as abandon of the application.
• After that, the examiner, depending upon the filing of the application and considering all the justifications raised, may or may not accept the response. If it is accepted, then the Trademark is published in the journal and goes further close to being registered else it may be put up for further hearing.

Case Laws related to objection under various sections of the Trademark Act ,1999

I. One of them was where a trademark was objected on the ground that it violated section 9(1) (b) of the Trademarks Act 1999 in the case Smt. Sandhya Sharma vs. The Registrar of Trademarks. Here, in this case, the mark used is “auto brake”, and the products are hubs and brake drums for trucks, buses etc. The Trademark “auto brake” is connected to the goods. Hence, the objection under section 9(1) (b) of the Trademark Act 1999 was applicable, and subsequently, the mark was refused to be registered.

II. In another case, Karnataka Co-operative milk producers Federation Ltd were producing and selling milk as well as milk products since 1985 under their mark ‘NANDINI’ which had been registered and Nandhini Deluxe deals with the business of running restaurants since 1989 under ‘NANDHINI’ and had applied for the same. The registrar allowed for the registration, however, it was set aside by the Intellectual Property Appellate Board and was confirmed by the High Court. Later, the High court’s decision was challenged by the proprietors of NANDHINI (restaurant) in the apex court objecting the use of the mark ‘NANDHINI’ by the appellants on the ground that the mark was deceptively similar to the respondent’s mark and it causes confusion among the public. Eventually, the Hon’ble Supreme court granted the registration of ‘NANDHINI’ by the restaurant provided the registration will not be given to them for milk products. Thus, ‘NANDINI’ was concerned with the production of only milk products, whereas the other ‘NANDHINI’ dealt in cooked fruits and vegetables, fish, meat etc. III. There was another instance related to the Trademark objection. In the case, Yahoo! Inc vs.Akash Arora & Anr, the defendant had a domain name ‘Yahoo India’ which was identical to plaintiffs trademark ‘Yahoo!’. The court held that similar domain names would cause confusion among the Internet users and they may be deceived into believing that both domain names have the same source. Still, the defendant defended his Trademark by claiming that it had put on a disclaimer on its website; however, the court took note that only disclaimer is not enough. A disclaimer cannot rectify such use of a similar name.

CONCLUSION