Trademark Objection Reply

After filing the Trademark application, a thorough examination is conducted by the Trademark Examiner. At this stage, the officer meticulously reviews your chosen brand name to ensure it complies with all regulations. If any issues arise, they will notify you. In the absence of objections, the Trademark application is accepted and published in the Trademark Journal.

A trademark objection is raised by the Trademark Registry when concerns emerge about your application. These concerns may include similarities with existing trademarks or problems with the classification of goods and services. The responsibility then falls on the applicant to respond effectively and address these concerns. Resolving these issues is crucial to ensure the smooth registration of your brand name.

Trademark objections are common. When an objection is raised, it’s essential to carefully analyze it and submit a well-considered reply. The response to Trademark objections must be filed within 30 days of receiving the Examination report. Failure to do so within the specified time frame will result in the application being marked as “Abandoned.”

Types of Trademark Objections

A Trademark objection may be raised in the following cases:

Trademark Application filed in Wrong Form

Applicant’s data is wrong or incorrect

Authorization not filed properly

Trademark application filed in wrong class

Incorrect Service/Goods description

Service/Goods Description not matching with the Trademark class

Lack of Distinctive character in applied Trademark

Applied Trademark similar or identical to existing Trademark

Applied Trademark is descriptive

Using Offensive or deceptive terms in the Trademark

Common language words or Surnames

An association to national flag and emblem

Error in User affidavit

Proofs of use not filed with Trademark application

Grounds for Trademark Objection

There are two types of grounds on which a Trademark is objected to, these are Absolute Grounds and Relative Grounds.

Absolute Grounds

The absolute grounds are mentioned under section 9 of the Trade Marks Act, 1999.

Under section 9(1) of the Trade Marks Act, 1999:

“The trademarks-

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered”

Under section 9(2) of the Trade Marks Act, 1999:

“A mark shall not be registered as a trade mark if—

(a) it is of such nature as to deceive the public or cause confusion;

(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;

(c) it comprises or contains scandalous or obscene matter;

(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).

Under section 9(3) of the Trade Marks Act, 1999:

“A mark shall not be registered as a trade mark if it consists exclusively of—

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods.”

Relative Grounds

The relative grounds are mentioned under section 11(1) and (2) of the Trade Marks Act, 1999.

Under section 11(1) of the Trade Marks Act, 1999:

“Save as provided in section 12, a trade mark shall not be registered if, because of—

(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.”

Under section 11(2) of the Trade Marks Act, 1999:

“A trade mark which—

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.”

Process To Reply The Trademark Objection

When the Trademark application faces objections, the Trademark department sends the examination report to the applicant and their agent via email. There is no government fees to reply to the trademark objection. In order to reply to the Trademark examination report, the below mentioned process shall be followed:

Understand the Objection: The first step is to carefully read and analyze the objection raised in the examination report. Try to grasp why the examiner raised the objection.

Drafting the Reply: Once you have a good understanding of why your trademark application is objected to, draft your reply carefully. Consider the following points:

Keep the reply brief and focused on the objection.

Address each objection separately.

Refer to relevant case laws to support your case.

Provide evidence of use if you’re already using the mark.

Request the Examiner not to reject the application without a chance for a hearing.

Submit the reply: After drafting the reply, submit it to the Examiner of Trademarks. You can do this either online or offline.

Review of Reply: The Examiner reviews the submitted reply. If satisfied, they may accept the Trademark and publish it in the Journal.

Further Action: If the Examiner remains unsatisfied and seeks more clarification, a hearing may be scheduled for the future. The applicant or their agent can attend the hearing to address concerns and potentially gain acceptance and get the Trademark accepted if the examiner is satisfied.

How To Submit Reply To Trademark Objection

Online Submission:

Log in to the E-filing portal at https://ipindiaonline.gov.in/trademarkefiling/user/frmLoginNew.aspx

Navigate to the Miscellaneous Reply section.

Submit the reply through the online portal.

Email Submission:

Send the reply to the Trademark department at [email protected].

Ensure that the reply is attached and relevant details are included in the email.

Physical Submission:

Submit a physical copy of the reply directly to the Trademark department.

Choose the method that is most convenient for you or your agent. Whether online through the portal, via email, or physically submitting, make sure to follow the specified guidelines for each submission method.

How To Avoid Trademark Objections

Consider the following guidelines when selecting your Trademark to avoid unnecessary objections:

Avoid Descriptive Terms: Stay away from the words or phrases that directly describe the character or quality of your goods or services. Similarly, refrain from using geographical names that are associated with the reputation or quality of the goods or services.

Conduct Market Research: Before finalizing your Trademark, conduct thorough market research to ensure that no identical or deceptively similar marks are already in use. Avoid copying or imitating another person’s Trademark, even if the goods or services differ.

Seek Professional Advice: Consider consulting a professional Trademark agent who can assist in conducting a comprehensive trademark search to verify availability. Additionally, they can help assess various parameters to prevent objections during the Trademark registration process, ensuring a smoother journey toward registration.

Difference Between Trademark Objection And Opposition

There is often confusion between the terms “objection” and “opposition” in the context of trademarks. Although these terms are sometimes used interchangeably, they carry distinct meanings. An “objection” refers to concerns raised by the Trademark Examiner regarding the application filed for registration. On the other hand, a “trademark opposition” occurs when a third party challenges the validity and registration of the trademark.