During the TM registration procedure, the trademark registrar often raises objections to the proposed trademark if it violates trademark regulations and laws. It could be for a number of reasons, including similarity to an existing brand, offensiveness to a specific religion, lack of a distinct design, and so on.
Trademarks confer a right to use specific shapes, symbols, and colours on goods owned by a business. The process of trademark registration requires careful planning and execution. If you are trademarking a product in India, then it is mandatory to get an approval from the registrar of trademarks.
Most cases are approved, but sometimes the registrar can object to the trademark request. Reasons for this are plenty, including if your trademark is similar to another company’s previously-existing trademark. If not properly responded to, this objection can lead to delays or trademark rejection. In this article, we highlight what you must do in case you receive an objection from the registrar for the grant of the trademark.
What Are the Reasons for Objection?
A trademark can be refused if it is not distinctive. If the mark consists of a common surname, name, name of the place, a section of society, common geometrical devices, etc., it is not regarded as capable of distinguishing the goods or services. It can also be objected to for being too broad or unrelated to the goods and services of the applicant.
What Should I Do if My Trademark Is Objected?
Assess the reason for objection: One of the most common reasons for the refusal of a trademark grant is its similarity with another mark. This similarity can be visual or phonetic (verbal similarity). In such a case, you will have clearly to demonstrate the following –
- That the marks are different in respect to the nature of goods
- That there is no similarity in the character of the resembling mark or that it belongs to a different industry, business or trade
- That the mode of purchasing the goods with resembling trademark or placing orders is different
- Any other surrounding circumstances to convey that the overall impression that the consumer gets from the goods is not confusing as to the source or origin of the gasification, it can be remedied by filing form TM-16 for corrections.
Filing Evidence With the Registrar:
You will have to include a set of documents to further your case for the grant of thods.
Factual Errors in Classification: The international classification of goods and services is published by the registrar of trademarks, and available on its website. In case there is inaccuracy in this clase trademark.
- This would include proof of usage of the mark on goods, the official website of the applicant, trading circles, or any other significant place. For 3D marks, accurate pictures are required
- In the case of similarity, the applicant can either demonstrate the distinction between the marks or can make alterations in his mark
- A no-objection certificate can obtain from the proprietor of a similar mark
- In certain cases, the registrar may feel that the trademark is unrealistically broad or unlikely that the applicant would deal in or provide that range of goods or services. In such instances, you would have to demonstrate that the trademark is used or intended to be used on all the goods and services specified. Further, proprietors may furnish actual proof of such goods, if already in existence.
- Business plans, templates, maps, and prototypes can also be good evidence. Similarly, the ‘object clause’ of the Memorandum of Association may also be furnished.
How to Respond to an Objection
When an objection is filed, the trademark’s status in the Indian Trademark Registry is changed to “Objected.” The steps to file a response in the event of a trademark objection are as follows:
Step 1: Analyzing Trademark Objection
The first step is to thoroughly analyse and research the objection, since any uncertainty in understanding can result in an improper trademark objection response being filed.
Step 2: Drafting Of Trademark Objection Response
The next step is to create a trademark response that includes the following information:
- A proper response to the concern raised, including supporting rule of law, precedents, and judgements
- The difference between the conflicting mark and the applicant’s mark
- Other supporting documents and proof that the response is correct
- An affidavit confirming the applicant’s use of the trademark on its website and social media channels; media advertisements; publicity materials; availability of trademarked products on e-commerce sites, and so on, accompanied with documentary proof
- The trademark e-filing facility is then used to file the response copy.
Step 3: Trademark Hearing
The trademark application will be processed further for registration and publication in the trademark journal if the response is accepted. If it is not approved, or if the trademark examiner requests additional clarifications, a trademark hearing will be held, and the public will be notified.
Step 4: Publication in the Trademark Journal
If the outcome at the hearing is positive, the mark will be accepted and will be ordered to be published in the trademark journal. The Refusal Order will be issued, stating the grounds for the refusal, if the outcome is negative. The applicant could still appeal the ruling by filing a review petition within 30 days of the Refusal Order’s date, stating the grounds for review.
Step 5: Registration
Your trademark will be open to review for four months after it is published in the Trademark Journal. If no third-party oppositions are lodged within that time frame, the mark will be registered, and the registration certification will be issued. If an objection is filed, the opposition process will proceed according to the law’s regulations.
If you have done Trademark filing with us, we shall notify you within a month of the publication of the examination report containing the objection that your trademark has been objected to by the Registrar. At Vakilsearch each case is given the attention it deserves, as our top lawyers will manage your case, prepare the necessary documents and give you guidance throughout the process.