What is the Trademark Objection Process in India?
Selecting a trademark for your business is a difficult task. The application for trademark goes to the Registrar, if accepted then the trademark is published. But in nearly 60 % cases there is a trademark objection. Therefore we in this article will guide you through trademark objection, reply for trademark objection and much more.
Trademark objection is the most crucial step during the trademark registration process. The trademark examiner issues it on the basis of the finding in the examination. This objection can relate to similarity, uniqueness, or distinctiveness. It is very important to draft an effective reply to the examination report.
Reasons for trademark objection
Following are the reasons for trademark objection-
- Many a times, the applicant uses an incorrect form for application. Therefore in such cases, the examiner raises trademark objection.
- In case the applicant mentions the incorrect name in the application, then the examiner objects the application. The applicant has to mention the full name of the applicant, and the same has to be filed in form TM-16.
- When the applicant fails to submit the TM-48 form along with an authorization letter in case the advoate or agent files the trademark application. This objection can be rectified by filing the TM-16 form.
- While filing the trademark application, if the applicant mentions an incorrect address, then the examiner issues trademark objection. The applicant can fill form TM-16 for correcting the address.
- There can trademark objection if the applicant mentions the incorrect class of trademark. One has to choose the class diligently for avoiding objections. In case the objection the applicant has to fill TM-16 for making clarifications.
- The examiner has the power to raise an objection if the proposed trademark is similar to an existing trademark.
- If the trademark is not distinctive in nature, then the examiner will object it.
- Lastly, if the examiner finds the trademark deceptive, he can raise the objections.
Absolute Grounds for Rejection of trademark Application
What is an examination report?
After an analysis of the trademark application, the officer presents his opinions about the trademark. These opinions are put together in an examination report. This report is further sent to the applicant.
What to do after getting a trademark examination report?
An objection is not the end of trademark registration. There is a trademark objection process which can be availed in case of objection. The applicant is given an opportunity to file a reply to the objections. The applicant has to file a reply within 30 days of receiving a report. This response can be submitted either by the applicant or by his lawyer or agent.
Trademark Objection Process
Following is the process for trademark objection–
- The first step in case of objection is to contact a trademark expert or lawyer.
- The expert will study the examination report and draft a reply on your behalf. The reply should crisp and clear; additionally, it should showcase the distinctiveness of the trademark.
- This reply has to be given within 30 days from the date of the receipt of the objection. It is recommended to file the reply as soon as possible.
- After filing the reply, the applicant can check the status of their application online.
- If the examiner finds the reply satisfactory and addresses all the concerns, then they publish the trademark in the journal.
- If there is no objection from third party, the trademark is approved.
Drafting reply for trademark objection
- If there is an objection for incorrect filing of a trademark, then the applicant has to frame a reply stating the changes.
- When there is objection regarding the wrong class of goods, then the applicant has to file an application to correct the class.
- In case the objections relate to absolute grounds, then the applicant must file the reply stating that trademark is unique.
- When the trademark objection relates to the existence of a similar trademark, then the reply should state the difference between the marks.
What will happen after filing a reply for trademark objection?
After the submission of the reply, the Registrar or Examiner will either accept the reply or hold a hearing. If he holds a hearing session, the applicant will need to hire an expert trademark lawyer for appearing before the authorities.
Important Points for drafting reply for trademark objection
Drafting a trademark objection is the most important step of the trademark objection process. Following are few tips for drafting a good reply for objection-
- Firstly, If there is objection under section 11 of The Trademark Act, 1999, then the objections shall be reviewed individually.
- One should briefly mention all the details pertaining to the marks.
- The applicant has to mention the services for which the applicant will use the trademark.
- Once the reply is submitted, if the Registrar accepts the application, he can advertise the accepted trademark in the Trademark Journal. If the response is not found satisfactory, then a hearing is assigned. The Registrar provides an opportunity of being heard.
There are loads of trademarks filing on a daily basis. We are so eager to get our trademark registration that we rush into the process. Therefore, most of the applications are objected at an early stage. The applicant has to make sure that the trademark selected complies with all the technicalities and there is less chance of objection. Then also, if there is an objection, the trademark objection process is very easy in India. One only requires an expert to help them with the filing of the reply.