TRADEMARK OBJECTION AN OVERVIEW
After examination of application for Trademark registration, the registrar has to decide whether application has to be accepted or rejected. In certain cases, application do not get accepted altogether it is marked for objection by the registrar of trademark. The examination report with such objection remark is communicated to the proprietor and he needs to file a reply to such objection within a prescribed period.
TRADEMARK REGISTRATION PROCESS: EXAMINATION AND OBJECTION
The following are the steps for Trademark Registration Process:
Step-1 Searching for proposed trademark on “Public Search” on trademark portal i.e. https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx and preparation of Trademark search report. Compliance calendar LLP can help you to find and register your unique trademark.
Step-2 Filing application for Trademark Registration in form TM-A along with prescribed fees and relevant documents as attachments.
Step-3 Scrutiny of trademark registration application, formality check, Vienna codification
Step-4 Trademark examination report/ Objection and hearing
Step-5 Publication of trademark registration application in trademark Journal/ trademark application accepted and advertised/Opposition/ hearing
Step-6 Registration of Trademark on the Trademark portal.
TRADEMARK EXAMINATION REPORT AND OBJECTION BY REGISTRAR
After filing of trademark application, the next step is scrutiny of application by the registrar and on that basis issuance of Examination report. In that examination report registrar may accept, reject, or object the trademark registration application.
If the examination report contains Objection, then reply to such objection is to be filed within 30 days from the date of receipt of examination report by the proprietor of Trademark.
On receipt of satisfactory reply, registrar will advertise the trademark application in trademark Journal, and it will be open for opposition from the public.
On the other hand, if no objection has been raised the application is accepted by the registrar, then the trademark application will be sent for Publication in the trademark journal.
REASONS FOR OBJECTION
There can be certain instances due to which registrar may issue objection in the examination report. These instances can be categorized into two sections:
- Section 9 of Trademark Registration Act, 1999
- Section 11 of Trademark registration Act, 1999
SECTION 9 OF TRADEMARK REGISTRATION ACT, 1999
Absolute Grounds For Refusal
As per Section 9 those trademarks shall not be registered:
- Which are devoid of any distinctive character,
- Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or
- Which consist exclusively of marks or indications which have become customary in the current language
- It is of such nature as to deceive the public or cause confusion;
- It contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
- It comprises or contains scandalous or obscene matter;
- Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
- A mark shall not be registered as a trademark if it consists exclusively of—
- The shape of goods which results from the nature of the goods themselves;
- The shape of goods which is necessary to obtain a technical result; or
- The shape which gives substantial value to the goods
SECTION 11 OF TRADEMARK REGISTRATION ACT, 1999
Relative grounds of refusal
Section 11 of the Act stipulates that where there exists a likelihood of confusion on the part of the public because of the identity with an earlier trademark or similarity of goods or services, the trademark shall not be registered.
In other words, where there is similar trademark exist in the Trademark register the trademark shall not be registered.
The term “earlier trade mark” means a registered trademark or an application which has a date of application earlier than the trademark in question.
TIMELINE FOR FILING REPLY TO TRADEMARK OBJECTION
Reply for Trademark Objection is to be filed within 30 days from the date of receipt of examination report. However, extension may be granted by the registrar on submission of application for extension of timeline by filing form TM-M electronically with a valid reason for not filing reply on time.
HOW TO FILE REPLY TO TRADEMARK OBJECTION
Following points are to be considered for filing better trademark reply and avoid rejection:
- Analysis of examination report and grounds of objection
First step towards filing trademark reply is proper analysis of trademark examination report issued by trademark examination report and understand the ground of objection.
- Draft a suitable reply to the objection
Next step is drafting of objection reply by accurately answering the objection and avoiding any vague statements in the reply to be filed. Reply should be in conciliation to the relevant provisions and case laws under Trademark registration Act, 1999.
- If the reply is accepted
If the reply gets accepted by the registrar, then trademark registration application will be sent for advertisement in the trademark journal.
- If the application is not accepted
The registrar will mark the matter for hearing and date and time will be notified to the applicant.
Thank you for giving your valuable time for reading full article, if you still have any queries regarding Trademark Registration in India then you can connect to our team of experts at compliance calendar LLP through our mail id i.e. info@compliancecalendar.in or connect us at 9988424211.
