Trademarks are extremely significant assets in today's competitive business environment. An essential step in the Indian trademark registration process is the trademark objection phase. Handling opposition to trademark filings is one of the major obstacles. The officer now thoroughly examines your selected brand name to make sure it complies with all regulations. Protecting your brand requires understanding these issues and knowing how to properly address them.
A trademark objection is a notification provided by the Registry of Trade Marks for legal purposes. The TM objection is the first step in trademark registration. This procedure may occur when the examiner raises doubts as to whether an existing registered trademark is similar. The trademark application is submitted to the Controller General of Patent, Design, and Trademark (CGPDTM) for review after filing. The examiner may mark the application as objected if they discover any issues that could lead to confusion down the road. Objecting does not take rejection into account. Trademark objections are primarily used to maintain fair competition in the market and avoid confusion.
Trademark objections aid in defending the exclusive rights of the currently registered mark. Additionally, it avoids confusion that could arise from resemblance and damage a specific brand's reputation down the road. As a result, the examiner brings up the trademark objection early on, which also helps to lower the likelihood of future opposition.
To make it simpler for you to obtain TM registration, we will cover all the information you require about the trademark objection process, goal, and explanation in this post.
Common eligibility criteria for trademark objections in India include the following:
Similarity: in the same class or category of goods and services, a trade mark must be similar or equivalent to an existing trade mark.
Descriptiveness: Because the contested brand is descriptive of the goods or services being offered, it is not qualified for trademark protection.
Confusion: the use of the mark at issue could cause confusion among consumers or lead to mistaken identity with the existing mark.
Deceptive: The disputed trademark gives inaccurate information regarding the nature, provenance, or source of the products or services.
Offensive: If the disputed trademark targets a specific set of people by disapproving or being discourteous.
Section 9(1)(b) of the Trademark Act, 1999 allows the Registrar to file trademark objections. This clause stated that there might be an objection if the applicant used a mark that identified the kind, characteristics, quantity, value, origin, or length of the "goods' or services'" production.
An Examiner/ Registrar may file an objection under
Section 9: Absolute Grounds of Refusal and
Section 11: Relative Grounds of Refusal of the Act on primarily these grounds –
The Indian trademark legislation does not provide specific grounds for opposition. Among the numerous reasons someone could object to a trademark are the following:
The trademark is a close match or exact duplicate of one that has already been registered.
The trademark isn't particularly unique.
It is a descriptive mark.
The application for the registration of a trademark was made in bad faith.
The trademark objection is employed in the current language or in a company's established protocols.
The public could become perplexed or confused by the brand..
The trademark is forbidden by law or is illegal.
According to the Emblem and Names Act of 1950, the trademark is prohibited.
The content of the trademark could offend the religious feelings of any group or section of the public.
The applicant might bypass the trademark objection procedure by adhering to the following guidelines:
Performing a Comprehensive TM search:
A Thorough TM search is an in-depth investigation that identifies the trademark's availability. To lower the chance of a TM objection, the applicant must thus perform a thorough TM search.
Select Distinct Mark:
In order to help set a specific brand apart, the applicant must select a distinctive mark. It also helps to prevent the procedure of TM Objection.
Speak with a TM lawyer
Without the TM attorney's consultation, TM registration may be more difficult. Their extensive experience over a long period of time can lessen the likelihood of being rejected. "Aperio Fincraft" might be the ideal resource.
Trademark objections will be handled in the following phases, which are listed below:
The Examination Report or the Receipt of Objection
An acknowledgement is provided to the applicant in the event that the registrar objects to the trademark application. This examination report provides the applicant with an understanding of the reasons for the trademark objection. The person who applies or the TM lawyer must examine the trademark and submit a response supporting their position.
Reply
The applicant has 30 days from the date of notification to file a MIS-R in response to the objective trademark. If no response is received by the examiner on the objection, the application may be considered abandoned.
At this point, the applicant must turn in all supporting documentation attached to their MIS-R. The bills, the applicant's website, social media ads, or e-commerce sites can all be considered supporting documentation. These records support the applicant's previous usage.
Hearing on Show Cause
The examiner holds a show-cause hearing after receiving the response. The applicant shall have three chances of appearing at the hearing; failure to appear will result in an application being terminated. If the examiner is pleased with the evidence at the Show Cause Hearing, they will publish the trademark in the journal; if not, they will reject the application.
Journal Advertisement
Any person or company that has a problem with the applied trademark after it has been advertised in the journal may submit a trademark opposition. The primary goal of this opposition approach is to avoid confusion that could arise from identical marks and damage a brand's reputation.
Accept or Dismiss
Following the completion of all the previously described procedures, the applied trademark will be registered and the applicant may begin using the ® symbol in front of their logo if they encounter no objection. The trademark application will be denied if it is not.
Reports that are released by the trademark office and analyze trademark applications to see if they fulfill registration requirements are known as trademark examination reports. The report will include an opportunity for the applicant to address any possible objections to registration.
The following details are usually included in the trademark examination report:
The applicant's name
The trademark application that is being made
The trademark search's findings
Any possible complaints about signing up
The way the applicant addressed the objections
Whether to register the trademark in accordance with trademark office guidelines
If no complaints are voiced, the trademark will be registered. However, in response to any questions the trademark office may have, the applicant will be in a position to reply.
The following paperwork is required for the Trademark Objection response:
Authorization Form TM-48
Bills and invoices
Examination report for trademarks
Any essential official records, including certifications from FSSCI or MSME
Screenshots of social media profiles or screenshots of commercials
Affidavit of Usage
It is important that you provide a thorough written response as soon as possible after obtaining the examination results. The application may be rejected if this isn't done. The answer must be comprehensive, stating that the mark satisfies all conditions for a legitimate registration and including arguments, facts, and supporting documentation. The trademark will be listed in the public journal if the reviewing officer is persuaded by the applicant's response. Four months are given to the public to review and voice any objections.
There are a few things to keep in mind when writing a response:
Analysis:
It's critical to comprehend and evaluate the objection in its entirety. Any ambiguity could result in a response that is insufficient.
Drafting:
To avoid possible rejection, the response must follow the prescribed format. It should succinctly respond to the objection, citing relevant legal precedents, earlier decisions, and distinctions between the disputed marks. Include any supporting documentation or evidence that bolsters the response.
Affidavit:
If the trademark is to be utilized on digital platforms like websites, social media accounts, or e-commerce sites, an affidavit must be attached to the reply.
Type of application | Time frame | Extension of time |
Ordinary Application | 4 months | 30 days |
Fast track Application | 3 months | 30 days |
In India, the following effects arise from failing to file a reply to an exam report:
This will be considered an abandonment of the trademark application.
The trademark registration will be denied to you.
As a registered trademark, you won't be allowed to utilize the mark.
For that reason, others cannot use the trademark.
It's still possible to submit a fresh application for the same trademark even if you don't respond to an examination report. But you will have to address in the new application the objections brought up in the examination report.
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