If the Trademark Registrar raises objections in the Trademark Examination Report, the status of your trademark register application will show as “Objected”. After the Trademark Application is scrutinized, objections may be raised by the Trademark Registrar under the Trade Marks Act Sections 9 and 11.
For Example, Trademark Objections are likely to be made under Section 9, when the Trademark Registrar considers the trade mark to be descriptive of generics/laudatory/goods indicating nature or quality of the goods.
To overcome this Trademark objection, it is essential to show that the trademark is characteristically distinctive. The Trademark objection can also be avoided if the trademark has developed a unique character because of extensive use. For this purpose, it is required to submit a user affidavit with cogent evidence which shows that the trade mark has acquired uniqueness.
Section 11 objections are made by the Trademark Registrar when there is a similar/ identical trademark in respect of similar/identical services/goods already on record in the Trade Mark Registry in India. In such a Trademark case, the Trademark Registrar issues a computer-generated Search Report(CSR) which comprises the list of conflicting marks.
An application for registration of a trademark can be objected by the Trademark Office in India for a number of reasons. In this blog, we look at the top reason for trademark objection in Jaipur, India.
Once a trademark application is filed in India, a Trademark Examiner examines the the application and makes a search of earlier trademarks – which are identical or similar to the mark being examined. The findings of the Trademark Examiner in India are compiled as the trademark examination report.
In case the trademark application is not made on the proper form, an objection as following is raised by the Trademark Examiner in India.
“The application is made on form TM-1, for certification marks in respect of goods or services falling in a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16.”
Corrective Action: The applicant of Trademark can overcome this Trademark objection by requesting to correct trademark application in india by filing a request on form TM -16.
The trademark applicant name must be entered properly in Trademark application, as suggested in this article. In case of incorrect trademark applicant name, the Trademark Examiner would raise an Trademark objection as follows:
“The application of Trademark appears to have been filed in the name of a partnership firm, names of all Partners of the firm should be brought on record by filing a request form TM-16”
Corrective Action: The applicant can overcome Trademark objection for incorrect trademark applicant name by requesting to correct trademark application by filing a request on form TM -16.
Whenever a trademark application is filed by a Trademark Attorney or Trademark Agent on behalf of the Trademark applicant, Trademark Form TM-48 must be attached. In case Form TM-48 is not attached or incorrectly executed, the Trademark Examiner would raise and objection as following:
“The Trademark application has been submitted by a person other than the applicant, a duly stamped Power of Attorney in favour of a particular agent should be filed.”
Corrective Action: The Trademark applicant can overcome an objection for failure or incorrect Form TM-48 filing by requesting to correct trademark application by filing a request on form TM -16.
In case a trademark application has not mentioned the principal place of business of the user or if the applicant’s address for service in India is not mentioned, then Trademark objection can be raised as under:
“The Principal Place of business of the applicant should be brought on record by filing a request on form TM-16” or “The applicant’s address for service in India should be brought on record by filing a request on form TM-16, since the Trademark applicant has no principal place of business in India.”
Corrective Action: The Trademark applicant can overcome an objection for incorrect address by requesting to correct trademark application by filing a request on Trademark form TM -16.
In a trademark application, if the specification of goods or services is too vague or encompasses a various variety of goods and services in a class, then an objection can be raised by the Trademark Examiner as follows:
“The specification of goods/services mentioned in respect of class xx, is very vague and wide. You should provide exact items in respect of which the trademark is sought to be registered, by filing a request on form TM-16.”
Corrective Action: The applicant can overcome trademark objection on the specification of goods or services by requesting to correct trademark application by filing a request on form TM -16.
In case, same or similar earlier trademarks of different trademark owner are found on trademark records in respect of same or similar description of goods or services, then an objection is raised as follows:
“The trademark applied for registration is not registrable under Section 11(1) of the Trade Marks Act 1999 since identical or similar marks in respect of identical or similar description of goods or services are there on records and because of such identity or similarity of marks and goods or services there exists a likelihood of confusion on the part of the public.”
Corrective Action: The applicant can submit a reply to the trademark examination report by stating that trademarks cited as conflicting marks in the examination trademark report are different than the applicant’s trademark, along with supporting evidence.
Trademarks which are not capable of distinguishing the goods / services of one person from those of another applicant are devoid of distinctive character and thus liable for objection under absolute grounds for refusal of trademarks. To overcome a trademark objection under absolute grounds for refusal, the trademark applicant can submit proof to show that the mark has acquired a distinctive character by virtue of its prior use.
An objection can be raised by the Trademark Examiner, if the trademark has potential for deception of the public by reason of something inherent in the mark itself or in its use, like nature, quality or geographical origin of the goods or services. An trademark objection as to deceptive trademark can be overcome if the applicant seeks to exclude goods or services from the specification by filing Form TM-16.
The Trademark Registry has classified goods and services under 45 classes.Your trademark application must mention the class/classes of the goods/services. The trademark would be registered under these trademark classes only.
Trademark is valid for 10 years at a time and is renewable indefinitely.
TM mark can be used with a trademark after allotment of TMR number from the government of India.
A trademark is a mark given to a brand / Name to protect the brand name, Logo or Slogan. A copyright is a Protection given to unique content such as books, music, videos, songs or even software.
The trademark registered under Trademark Act 2000 will be valid only in India. However, in some countries, trademarks registered in India can be used as a base for registering trademarks in that country.
Registrations of Company Names in India, Business Names or Domain Names do not provide ownership or a monopoly right in a name as do trademark registrations.
To initiate trademark opposition proceedings in india, a notice of trademark opposition can be filed by any person within four months of date of advertisement or re-advertisement of the application in the Trademark Journal. The trademark opposition in India must be on Trademark Form 5 in the prescribed manner and filed with applicable fees. The trademark opposition in india notice should contain the following information:
Application against which trademark opposition in India is entered including trademark registration application number in India, class of goods or services for which trademark registration application in India was made and the name of applicant of the trademark application.
Details of the trademark opposition party including name and address.
The grounds for trademark opposition.
Trademark opposition in india: Any person can raise an opposition on a trademark in India that is advertised on the trademark journal with four months of advertisement or re-advertisement.
Counter-statement: The trademark opposition notice in India will be forward to the trademark applicant. Trademark applicants will have the option to file counter-statement within two months in India.
Hearing: Based on the trademark opposition and counter-statement, the registrar can call for a hearing if required.
Registration or Rejection: If the registrar is satisfied with the trademark applicant evidence, the trademark will be rejected; if not the trademark application will be rejected.
Once the trademark opposition notice is filed with the Trademark Registrar, the Registrar shall serve a copy of the trademark opposition notice to the trademark applicant. Within two months of receipt of the trademark opposition notice, the trademark applicant must file a counter statement. If the trademark applicant fails to file the counter statement within the prescribed period, the trademark application shall be deemed to have been “abandoned”. To know more about trademark application status, refer to “Understanding Trademark Registration Status“.
Based on the trademark opposition filed and the counter-statement filed, the Registrar may call for hearing of the parties. The Registrar then has the option to rule on the trademark registration application and trademark opposition filing based on the evidence presented.