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Trademark Objection
Introduction to Trademark Objection
A trademark is an important element from the point of view of intellectual property as it protects some aspects of a brand, usually associated with a business such as logos, brand names, slogans or symbols. Because trademarks are businesses assets, it is essential to have them registered so as to be able to distinguish the brand from other brands and enjoy legal protection. However, during the trademark registration stage, trademark applicants may encounter a trademark objection, which is a formal query raised by the trademark examiner via examination report that challenges an applicant’s trademark.
There are many reasons for filing a trademark objection, one of these being that the mark claimed is similar to a registered trademark, or it does not comply with the provisions of the trademark act. Quite often receiving an objection appears to be considered as a setback, however, it does not a rejection. It is simply a challenge which with a proper response and supporting documents, you can do so and proceed with the registration.
Need of Trademark Objection Reply
Avoid Abandonment
Sometimes, trademark examiners cannot recognize your Trademark's distinctiveness, which results in objections. It allows explaining with your reply why the mark is different and gain trademark protection.
Brand Protection
Registration of the mark establishes the brand's identity and differentiates it from other products or services on the market. Trademark protection is very important if a company wants to retain its distinctive identity.
Utilize the opportunity
The registry will request replies from applicants on the mark for clarifications to be made. If they are satisfied, the chances of getting your mark registered are good.
Legitimate Claim
In response to the objection, you will have the opportunity to state your claim on the mark.
Grounds for Trademark Objection
During the trademark registration process, objections are raised either by the registrar or any third party (*Opposition) who has issues with the application. These objections are such that they also ensure the compliance of the trademark with the existing laws and rights of other people. Knowing the reasons for objection may assist users in formulating replies that have a higher chance of being accepted and thus increase the likelihood of successful registration.
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Poor Distinctiveness
- Explanation: A trademark needs to be able to identify the goods or services of a particular entity from other entity. It is for this reason that many applications that are made for trademarks that contain common or generic words, phrases, or designs are taken to have less distinctiveness and are objected to.
- Example: It may be common to object an application for the registration of the term "Best Clothes" since it does not particularly identify the trademark of one brand.
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Likelihood of Confusion with Registered / Existing Trademark
- Explanation: Registration or application based for a new trademark application that is identical or confusingly similar to registered or existing trademark can be a reason for objections to be raised.
- Example: For instance, there is likely to be a challenge to open the registration of the logo which bears the name “Pepsi Lite” because it appears to be similar to “Pepsi.
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Deceptiveness
- Explanation: The use of trademarks which are customarily used for misleading or deceptive purposes that falsely describe or suggest the characteristics, quality or origin of goods or services is restrained under Section 9(2) of the Indian Trademark Act, 1999.
- Example: A trademark of the name “Pure Organic Honey” when applied to a honey product containing artificial sweeteners can be said to be materialistically false.
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Use of Prohibited or Offensive Marks
- Explanation: Trademarks which are vulgar, abusive, and contrary to the interest of the public are objected to under Section 9(2).
- Example: Registration of a trademark with insulting words or signature with patches of offensive pictures.
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Incorrect Classification
- Explanation: Filing the trademark under the wrong class of goods or services as per the Nice Classification can lead to objection.
- Example: Filing a trademark for clothing under Class 30 (food products) instead of Class 25 (apparel).
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Conflict with Well-Known Trademarks
- Explanation: If a proposed trademark conflicts with a well-known trademark, it may face objection, even if it pertains to a different class of goods or services.
- Example: Registering "Apple Tech Solutions" may be objected to due to the global reputation of the Apple trademark.
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Descriptive Marks
- Explanation: Trademarks that directly describe the nature, quality, quantity, or purpose of goods or services are often objected to.
- Example: Applying for the trademark "Fresh Milk" for dairy products may lead to objection as it is descriptive.
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Absence of Required Documents
- Explanation: Missing or incomplete documentation, such as proof of prior use, user affidavit, or power of attorney, can result in objections.
- Example: Not providing an affidavit supporting the claim of prior usage of a trademark.
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Use of Geographic Names
- Explanation: Trademarks that include geographic names or locations can be objected to unless they have acquired distinctiveness through usage.
- Example: Registering "Delhi Sweets" as a trademark may be objected to because it describes a location.
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Prohibited Symbols or Names
- Explanation: Trademarks containing emblems, names, or symbols restricted under the Emblems and Names (Prevention of Improper Use) Act, 1950, are objected to.
- Example: Using symbols like the national flag or names of government organizations such as "India Post."
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Failure to Follow Trademark Formalities
- Explanation: Errors in the application process, such as incorrect details, insufficient information, or non-payment of fees, can lead to objections.
- Example: Submitting an application with incomplete owner details or incorrect class descriptions.
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Similarity to Translated Words
- Explanation: If a proposed trademark is phonetically or semantically similar to a registered trademark in another language, it may face objection.
- Example: Applying for "Amulya" in Hindi may conflict with the existing trademark "Amul."
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Non-Use of the Trademark
- Explanation: If the applicant cannot prove prior usage or intention to use the trademark, the application may face objection.
- Example: Filing a trademark without any proof of its use in commerce.
Types of Trademark Objections by the Examiner
In India, the Trade Marks Registry may raise objections under Sections 9 and 12 of the Trade Marks Act, 1999, during the examination of trademark applications. Section 9 outlines absolute grounds for refusal, focusing on the inherent characteristics of the mark, while Section 12 addresses relative grounds, particularly concerning the similarity to existing trademarks.
Section 9: Absolute Grounds for Refusal
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Lack of Distinctiveness (Section 9(1)(a)):
Marks that cannot distinguish the goods or services of one person from those of another are deemed non-distinctive.
- Case Example: In the case of Muneer Ahmad vs. Registrar of Trade Marks (2023), the applicant sought to register the word 'Bharat' with a paintbrush design for paintbrushes. The Registrar refused registration, citing the mark's descriptive nature and lack of distinctiveness.
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Descriptive Marks (Section 9(1)(b)):
Marks that describe the kind, quality, quantity, intended purpose, or other characteristics of the goods or services are considered descriptive and are generally not registrable.
- Case Example: In M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trademarks, the court ruled against registering the mark "Rasoi" for edible oils, as it merely described the nature of the product.
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Marks Likely to Deceive or Cause Confusion (Section 9(2)(a)):
Marks that are deceptive or likely to cause confusion among the public are not registrable.
- Case Example: In Amritpal Singh v. Lal Babu Priyadarshi, the Registrar refused the trademark for the word ‘Ramayan’ on the grounds that it could not distinguish the products and was likely to hurt religious feelings.
Section 12: Relative Grounds for Refusal
- Case Example: In Praveen Kumar Maakar vs. Union Of India And Anr (2017), the petitioner's application for the trademark 'FRONTIER' was deemed abandoned after failing to respond to an opposition, highlighting the importance of addressing objections related to existing trademarks.
Section 12 pertains to the refusal of registration when a mark is identical or similar to an existing registered trademark for similar goods or services, leading to potential confusion among the public.
Responding to Objections
Applicants can overcome objections by providing evidence of the mark's distinctiveness, demonstrating that it has acquired a secondary meaning through extensive use, or modifying the mark to eliminate deceptive elements. For objections under Section 12, conducting a thorough trademark search prior to application and ensuring the mark is sufficiently distinct from existing ones is crucial.
Understanding the grounds for refusal under Sections 9 and 12 is essential for navigating the trademark registration process in India. Applicants should be prepared to address objections by providing substantial evidence or making necessary modifications to their trademarks.
Steps to Handle Trademark Objection
Responding to a trademark objection involves several steps. Here’s a detailed process to address it effectively:
- Understand the grounds for the objection by carefully reading the Examination Report.
- Identify whether the objection is procedural, substantial, or based on opposition from a third party.
Collect supporting documents to strengthen your response:
- Proof of prior usage (invoices, advertisements, or promotional materials).
- Brand recognition evidence (awards, media coverage, or testimonials).
- Clarification documents for procedural errors.
Draft a Response
Prepare a detailed reply addressing each point in the Examination Report:
- Provide a rationale for the distinctiveness of your trademark.
- Cite legal precedents, if applicable.
- Attach supporting documents and evidence.
File the Reply Online
- Submit your response through the official Trademark Registry portal (https://ipindiaonline.gov.in/trademarkefiling/user/frmloginnew.aspx) using your credentials.
- Keep the acknowledgment receipt for reference.
Attend the Hearing (If Required)
- If the registrar is not satisfied with the written reply, you will be called for a hearing.
- Present your arguments and evidence in person or through a legal representative.
Wait for the Decision
After reviewing your response and evidence, the registrar will either:
- Accept the trademark for publication in the Trademark Journal.
- Reject the trademark application.
Common Mistakes to Avoid in Trademark Objection Reply Process
Dealing with a trademark objection can be straightforward if approached correctly. However, many applicants make mistakes that can lead to delays or outright rejection of their trademark. Here are the most common mistakes and how to avoid them:
- Mistake: Failing to respond to the objection notice within the stipulated time (30 days).
- Solution: Monitor your application status regularly on the Trademark Registry portal to ensure timely action on any objections.
- Mistake: Providing vague or incomplete responses to the points raised in the Examination Report.
- Solution: Address each objection point thoroughly with clear explanations and strong supporting evidence.
Lack of Supporting Documents
- Mistake: Not including necessary documents, such as proof of usage or prior registration, in the response.
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Solution: Attach all relevant evidence, including:
- Proof of trademark use (advertisements, invoices, brochures).
- Legal precedents or judgments, if applicable.
Choosing a Non-Distinctive Trademark
- Mistake: Applying for generic, descriptive, or commonly used terms that lack distinctiveness.
- Solution: Ensure your trademark is unique and capable of distinguishing your goods or services from others.
Filing in the Wrong Trademark Class
- Mistake: Submitting the trademark application under an incorrect class of goods or services.
- Solution: Use the Nice Classification System (link) to identify the correct trademark class before filing.
Overlooking Prior Trademarks
- Mistake: Not conducting a trademark search before filing, leading to objections based on similarity with existing trademarks.
- Solution: Perform a comprehensive trademark search using the Trademark Registry Search Tool to avoid conflicts.
Failure to Hire a Professional
- Mistake: Handling objections without adequate legal knowledge or expertise.
- Solution: Engage an experienced trademark attorney to draft a professional response and represent your case effectively.
Ignoring the Public Examination Phase
- Mistake: Assuming the trademark registration process ends after overcoming the objection. Ignoring opposition notices during the public examination phase.
- Solution: Regularly check the Trademark Journal for any opposition filed against your mark.
List of Documents Required
for Trademark Objection
When you're ready to get on the Trademark Objection journey, having the right documents is crucial. This ensures a smoother process and helps avoid unnecessary delays.
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Documents from Registry
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Examination report
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Trademark hearing notice
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Trademark Documents
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Authorization letter /Power of Attorney to file the objection
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Affidavit on the usage of the mark
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Documentary proof of Trademark in commercial use.
NOTE:
*On the scheduled date, duly appointed applicant or attorney must appear before the authorities
**We will collect additional documents based on the information you provided to the filingbee.
Thank You