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A trademark is a logo, symbol, tagline, or a combination of these that represents a brand’s identity. Oftentimes, during the trademark registration process, the Trademark Registrar raises objections on the intended trademark if it violates rules and laws of trademark registration. It could be due to several reasons like similarity with an existing trademark, offensive to a particular religion, absence of a distinct design, etc. In the event of a trademark objection, a comprehensive reply needs to be filed within a month, from the date of issuance of the objection.
The Trademark Examiner scrutinizes the trademark application to make sure the application isn’t in conflict with any trademark rules. A trademark application can face objection for any of the following reasons:
If the application is not filed using the correct form an objection would be raised by the examiner. For example, it is Form TM-4 for registration of collective marks for goods and services in any one class. Form TM-51 for registration of a trademark under different classes of goods and services.
Trademark names that include deceptive terms or that which try to deceive or mislead customers with false descriptions of products or services will be rejected. For instance, an entity branded “Vanilla chocolates” that sells chocolate flavours may be deemed deceptive. At the same time, applications registering for trademarks containing offensive terms will be rejected.
When the trademark application fails to mention in brief the products and services of the business, it is highly likely that the Trademark Examiner may reject the application due to the vague information.
The intended trademark must not be similar to any mark that already exists in the industry. The Trademark Examiner can raise objections under the Trademarks Act stating that it might create confusion among the masses.
Trademark has to be filed on the true name of the applicant and double-checked for the right spellings.
When an objection is raised, the status of the trademark in the Indian Trademark Registry will be marked as “Objected”. The following are the steps to file a response in the event of a trademark objection:
The first step involves analyzing and studying the objection carefully, as any ambiguity in understanding can lead to incorrect filing of Trademark Objection Response.
The next step is to draft a trademark reply which should include the following:
• A proper answer to the objection raised with supporting rule of law and precedents and judgments supporting the case
• The differences between the conflicting mark and the mark of the applicant.
• Other supporting documents and evidence that validates the response.
• An affidavit stating the usage of the trademark in the applicant’s website and social media channels; advertisement in the media; publicity material; availability of trademarked products on e-commerce sites, etc. along with the documentary proof for the same
• The response draft is then filed online on the Trademark e-filing portal.
If the response is accepted, the application will be processed further for registration and advertisement in the Trademark Journal. If it is not accepted, or there are additional clarifications sought by the Trademark Examiner, there would be a trademark hearing scheduled and the same will be notified with a notice.
If the outcome at the hearing is positive, the mark will be accepted and will be ordered to be published in the Trademark Journal. In the event of a negative outcome, the Refusal Order will be passed, explaining the reason for the refusal. The applicant still would have the option to appeal the order by filing a review petition within 30 days from the date of the Refusal Order mentioning the grounds on which the order must be reviewed.
Once your trademark is published in the Trademark Journal, it will be open to scrutiny for a period of four months. If no third-party oppositions are filed within that period the mark will then proceed towards registration, and the Registration Certification is issued. If an objection is filed the opposition proceedings will take place as per the prescribed rules of the law.
The status of the trademark application can be tracked here.The status will be displayed as “Objected”.
Trademarks are rejected due to one or more of the following reasons:
• Usage of scandalous or offensive words
• Absence of unique signs and terms
• Official and Patriotic resemblances-like flag or emblem
• Existence of identical marks in the industry
The response has to be submitted within 30 days from the date of issuance of the examination report.
We can help file extension thirty days after the deadline.
Yes. An affidavit mentioning the usage of the Trademark has to be submitted mandatorily.
The applicant may request a hearing adjournment if he/she is not able to attend it.
If your mark has been accepted, it will be advertised in the Journal within four months of raising an objection. If no such third parties raise trademark oppositions, the trademark will be registered in a couple of weeks.
Trademark will be registered in 3-5 months, approximately.
If it is not successful, there will be a Refusal Order passed that explains the reason for the refusal.
It is always advisable to contest the rejected trademark and/or apply for a new trademark application, as the case may be. Trademark registration is mandatory for taking legal action against infringers.
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