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Trademark Objection - An overview

A trademark is any logo, symbol, tagline, or a combination of both that represents a brand’s identity. Oftentimes, during the trademark registration process, the Trademark Registrar raises objections on the intended trademark if it is found violating the Trademark rules and laws. It could be due to several reasons like similarity with any existing trademark; offensive and hurting the sentiments of a particular religion or a fringe group; absence of a distinct design; etc. Upon the event of trademark objection, you need to file a comprehensive trademark objection reply within a month, from the date of issuance of the objection.

A trademark registration undergoes a series of steps, involving:

  • Trademark search
  • Filing of trademark
  • Formality check/ Vienna codification
  • Trademark Examination
  • Publication in the Journal
  • Registration of Trademark

As part of the fourth step, Trademark Examination, your application will be scrutinized by the designated Trademark Examiner under the various sections of the Trademark Act. The Trademark Examiner determines whether the mark is relevant to your goods/services, and distinct enough to not cause any confusion with a similar mark registered earlier by another party.

If the application is found satisfactory, the Registrar will accept and pass an order of acceptance for the mark to be published in the Trademark Journal, else it will be objected and a trademark examination report will be issued. The report states the reasons for trademark objection like the presence of conflicting mark; or that the mark is non-distinctive etc.

Our team shall duly inform you of the Trademark Objection once notified, or you could approach us for responding to the Objection if you have been notified of the same. A comprehensive reply to the objection needs to be filed within 30 days from the date of issuance/notification of the trademark examination report.

Why Respond to a Trademark Objection? - Benefits

Filing a prompt response to trademark objection along with supporting evidence has the following benefits.
  • The existing trademark will be saved from being abandoned or rejected and be considered for further processing.
  • When the response is stated well, citing the uniqueness of the mark, the possibility of it getting registered is high. The company can enjoy the benefits of the registered trademark soon, thereby protecting the brand against infringement.
  • Some companies start using the ™ mark while still waiting for the Trademark registration report. The customers would also start recognizing the brand and it would be illogical for the company to apply again as a new entrant. Hence, it is best to file a trademark appeal against the Registrar and win the brand back.
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Registration Process

Online Registration

How to file a Trademark Objection response - A detailed process

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 reply to the objected trademark:

  • Step 1 :ANALYZING TRADEMARK OBJECTION

    The first step involves analyzing and studying the objections carefully as any ambiguity in the understanding can lead to the wrong filing of trademark objection reply.

  • Step 2 : DRAFTING OF TRADEMARK OBJECTION REPLY

    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 cited conflicting mark and the mark of the applicant.
    • Other supporting documents and proofs that validate the reply
    • 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 the trademarked products on e-commerce sites, etc. along with the documentary proofs for the same

    The response draft is then filed online on the Trademark e-filing portal.

  • Step 3 :TRADEMARK HEARING

    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 trademark hearing scheduled and the same will be notified by a Hearing notice.

    Depending upon the case, Vakilsearch can assist you in Trademark Hearing service, exclusively.

Documents required to appear for Hearing

  • Authorization letter
  • Affidavit of usage
  • Examination report
  • Trademark hearing notice
  • Documentary proofs showcasing the actual use of the Trademark in commerce

    • On the scheduled date, the applicant or the attorney duly appointed by the applicant has to appear before the authorities.

  • STEP 4: PUBLICATION IN THE TRADEMARK JOURNAL

    TIf 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 briefing the reason for refusal and the Applicant still would have an 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.

  • STEP 5: REGISTRATION

    Once your trademark is publihed in the Trademark Journal, it will be open to opposition for a period of 4 months. If there are no third-party oppositions filed within the said 4 months, the mark will proceed towards registration and the Registration Certification will be issued.

    If any trademark opposition is filed, the opposition proceedings would take place as per the set rules.

Reasons for trademark objection

The Trademark Examiner scrutinizes the trademark application to make sure the application isn’t at odds with any trademark rules. A trademark application can face objection for any of the following reasons:

FILING OF INCORRECT TRADEMARK FORM

If the application is not filed on 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.

INCORRECT TRADEMARK APPLICANT NAME

Trademark has to be filed on the true name of the applicant and double-checked for the right spellings.

USAGE OF DECEPTIVE AND OFFENSIVE TERMS:

Trademark names that include deceptive terms or that which try to deceive or mislead the customers with false description of the material will be rejected. For instance, an entity branded “Vanilla chocolates” sells chocolate flavours may be deemed deceptive. At the same time, applications registering for trademarks containing offensive terms will be rejected.

INSUFFICIENT INFORMATION ON GOODS/SERVICES:

When the trademark application fails to mention in brief the products and services of the business, it is highly likely the Trademark Examiner may reject the application due to the vague information.

EXISTENCE OF AN IDENTICAL MARK:

The intended trademark must not be similar to any mark that is already been existing in the industry. The Trademark Examiner can raise objections under the Trademarks Act stating it may create confusions among the masses.

Why Bright legal registration Services

If you have filed your trademark with us, we will inform you that your trademark has been objected by the Registrar less than a month from the publication of the Examination Report containing the objection. If you are not a customer, it's best you contact us within a month from the publication of the report.

We will put you in touch with our lawyers, who will understand your case and frame the correct response and affidavit (if required). The response will be submitted.

If the Registrar does not accept your initial response, an interview will be scheduled, where the arguments would need to be presented in person. If the government is satisfied with the response, the objection will be lifted within 18 months.

FAQs on Trademark Objection

The status of the trademark application can be tracked at http://www.ipindia.nic.in/. The status will be mentioned 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.

Due to unforeseen circumstances, if you had skipped the deadline, Vakilsearch professionals can help file extension after 30 days until the next status changes. It depends on the discretion of the Trademark Officer (TO).

Yes. An affidavit mentioning the usage of the Trademark has to be submitted mandatorily.

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