Trademark Objections | Reasons and How to Respond?

 

During the trademark registration online process, the trademark authority or a private individual may object to a Trademark being registered. So, the article discusses the reasons for trademark objections and what should you do if any trademark objections arise.

 

Objection to a Trademark

After trademark application files, a Trademark Examiner reviews them and conducts a search for prior trademarks that are identical or similar to the mark under consideration. The trademark examination report compiles the Trademark Examiner's conclusions.

 

Using the Wrong Trademark Form

The Trademark Examiner will raise the following objection if the trademark application is not in the right format.

"For certification marks in respect of products or services falling into a class, the application should be modified as TM-4. By making a request on form TM-16."

Take the action: The application can overcome this objection by submitting a request on form TM -16 to correct the trademark application.

 

Name of the Trademark Applicant is Incorrect

As mentioned in this article, in the trademark registration online application the trademark applicant's name must be appropriately entered. If the trademark applicant's name is wrong, the Trademark Examiner will object as follows:

"Because the request appears to have been made in the name of a partnership firm, the names of all partners should add to the database by filing a request form TM-16."

Take The action: The application can resolve an objection for an inaccurate trademark applicant name by filing a request using form TM -16 to correct the trademark application.

 

Failure to file Form TM-48 

Trademark Form TM-48 must attach to any trademark application on behalf of the applicant by a Trademark Attorney or Trademark Agent. If Form TM-48 does not attaches or completes incorrectly, the Trademark Examiner will raise the following objection:

"A duly stamped Attorney in favour of a specific agent should be filed if the application was submitted by someone other than the applicant."

Take the action: The applicant can resolve an objection for failure or erroneous Form TM-48 filing by filing a request on Form TM-16 to correct the trademark application.

 

Incorrect Address on Trademark Application

If the applicant's major place of business or address for service in India does not states in a trademark application, an objection can file as follows:

"The applicant's address for providers in India should be brought on documentation by filing a request on form TM-16. Since the claimant has no principal place of business in India." 

"The applicant's location for service in India should be on record by filing a proposal on form TM-16. Since the applicant has no corporate headquarters in India."

Take the action: The applicant can resolve an objection for an erroneous address by filing a request on form TM -16 to correct the trademark application.

 

Goods or services with a hazy specification

If the products or services specification in a trademark application is excessively ambiguous or contains a vast variety of goods and services in a class, the Trademark Examiner can complain as follows:

The goods/services specification mentioned in relation to class xx is quite imprecise and broad. By making a request on form TM-16, you should provide the exact products for which the trademark intends to register.

Take the action: The application can overcome an objection to the specification of goods or services by filing a request on form TM -16 to correct the trademark application.

 

Similar Trademark

If records reveal the same or comparable prior trademarks of different trademark owners for the same or similar description of goods or services, an objection lodges as follows:

"Under Section 11(1) of the Trade Marks Act 1999, the trademark applied for registration is not registrable because of identical or similar marks. In respect of identical or similar descriptions of goods or services are on records. Also, there is a likelihood of public confusion. As a result of such identity or similarity of marks and goods or services.

Take the action: The applicant can respond to the trademark examination report by saying that the trademarks listed as conflicting marks in the report are not the same as the applicant's trademark, as well as providing supporting proof.

 

Trademark without a Unique Character

Trademarks that are unable to identify one person's goods/services from those of another are devoid of distinctive character. Hence subject to rejection under the absolute grounds for trademark denial. 

The trademark applicant might present proof to indicate that the mark has developed a distinctive character. It's earlier usage to overcome a trademark objection under absolute grounds for denial.

 

Deceptive Trademark

The Trademark Examiner can object if the mark has the potential to deceive the public. Due to something inherent in the mark or its usages. Such as the nature, quality, or geographical origin of the goods or services. 

If the applicant files Form TM-16 to exclude products or services from the specification, a misleading trademark objection can be overcome.

 

How do you respond to trademark objections?

Following the filing of an objection, the applicant will be notified of the objection and the grounds for the objection.

• The first step is to respond to the objection with a counter statement.
• It must complete within two months of receiving the notice of trademark objections.
• If no objection files within two months, the application will mark as Abandon.

 

Important Points for responding to Trademark Objections

The Registrar may call for a hearing once the counter files. If he rules in favour of the applicant, the trademark will register. If he determines in the opposing party's favour, the trademark will be removed from the Journal. Moreover, the registration application will be denied.

• The appeal must file within three months of the date of the Registrar's order.
• If an appeal submits after the three-month time expires, the petitioner must describe the reason for the delay. In a petition for condonation of delay, which carries a fine of Rs 2,500. If the Authority accepts the rationale, the appeal will schedule for a hearing.
• TradeMarks (Applications, Appeals, and Fees to the Intellectual Property Authority) Rules must be followed while filing a trademark. Hereinafter referred to as Trademark rules.
• The applicant must verify all of the documentation.
• The Deputy Registrar must then endorse each application on the date it presents.
• If the Deputy Registrar discovers any flaws in the application, he will notify the applicant.
• The applicant must correct the faults and resubmit the application within two months.
• If you do not comply, the Deputy Registrar will consider your application abandoned.
• The Deputy Registrar will register the case. After that, they will assign it a serial number if the application judges to be in order.

If the matter dismisses or ruled ex-party, you have 30 days from the date of the judgement to file a petition to overturn the previous order. The case will be heard, and the government's decision will stand. If the applicant is dissatisfied with the government decision, he has the option of filing an appeal with a High Court. Subsequent appeals to the Supreme Court of India are also possible.