Trademark Objection

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What is Trademark Objection?

Trademark objection is one of the initial steps in the trademark registration process. Trademark objection does not mean outright denial; Instead, the Registrar of Trademarks seeks a valid reason or explanation regarding the mark and registration. The applicant can explain how the said trademark meets the criteria for availing valid registration.

In case of trademark objection, a comprehensive reply has to be filed within one month from the date of issue of the complaint. There are many reasons for trademark objections, such as similarity with existing trademarks, offensive trademarks, absence of exclusivity, etc. Registrars often raise objections to the applicable brand for violating trademark registration rules and laws during the trademark registration process. 

Trademark registration forms an essence for the brand and differentiates it from other available services or products available in the market. Therefore, protecting a trademark is very important to maintain its unique identity. But there are some cases when someone stops you from claiming your entitlement. Therefore, we need to understand the concept of trademark objection.

Top Reasons for Trademark Complaint

Trademark applications can receive complaints on more than one ground. The foundations for declining to register a trademark can be divided into two parts:

  • Absolute grounds of refusal – refers to the inability of the marks to be explicitly presented or graphically.
  • Relative grounds of refusal – Continuing to the earlier trademarks and their respective rights.

Following are some of the grounds on which an examiner can object to a trademark registration:

  • Misleading Marks: Any trademark is likely to confuse people because it is inherent in its use, such as the nature, quality, or geographic origin.

The objection to a misleading trademark can be overcome by filing Form TM-16. 

  • Lack of distinctive character: Trademarks that can’t distinguish between one person’s products and services and another’s goods and services aren’t distinctive and can be challenged on absolute grounds.
  • Existence of a similar trademark: An objection can be raised if different trademark owners have the same or similar trademarks on record concerning the same or similar description of the same or similar goods or services.
  • Incorrect or unclear description of goods: Suppose the specification of goods or services is too vague or includes many goods or services. In that case, a complaint can be raised by the Registrar of Trademarks as follows:

“The goods/services indicated concerning class xx are described in a highly imprecise and comprehensive manner. As a result, while requesting Form TM-16, you should specify the specific objects for which the trademark is sought to be registered “.

  • Wrong Address on Trademark Application: If the Trademark Applicant has not correctly mentioned the principal place of business, they have not stated the address for the service in India. Therefore, the objection can be raised as follows.

“Principal place of business of the applicant must be brought on record by filing a request on Form TM-16” or “Address of the applicant for service in India must be obtained on record by filing a submission on Form TM-16 because the applicant is in India. There is no prime place of business.”

  • Wrong name of the applicant: The applicant has to enter the name correctly in the application. In case of the wrong name on the trademark application, the examiner shall object as follows:

“The application seems to have been filed in the name of a partnership firm. Therefore, the names of all the firm partners should be brought on record by filing a request Form TM-16.”

  • Wrong Trademark Form: Suppose the trademark application is not filed on the correct form. In that case, the examiner will file a complaint as follows: “The application for a certification mark in respect of products or services that fall into a category is made on Form TM-1. However, by submitting a request on Form TM-16, the application form should be amended as TM-4.”

Trademark assessment notice

  • An examination report is issued to the trademark applicant after the trademark registration application is submitted and evaluated by the Trademark Officer. It’s also available on the Trademark Office’s website, along with information on trademark applications. 
  • The Trademark Examiner’s objection allows the applicant or an authorized agency to react to the Trademark Examination Report with a rebuttal. 
  • After considering the input, the trademark application is allowed for registration if the objection may be dismissed based on the applicant’s response. In the publication, the trademark is published.

Reply to Trademark Examination Report

  • An objection in the Trademark Test Report can be submitted by the applicant or an authorized agent by the Trademark Applicant.
  • This reply may be submitted online at the Trademark Office website, in person, or by post. 
  • An affidavit and supporting documents will also have to be submitted along with the answer to the examination report.

Complaints regarding formality requirements

In case of objections regarding formality requirements, the applicant should comply with the conditions as desired by the officer. 

For instance : Suppose a trademark applicant has sought a person’s consent whose image appears on the trademark. In that case, the applicant has to submit the person’s approval in writing along with supporting documents or stating that the image appearing on the brand is not of a specific individual but a generic image.

Complaint to misclassification of trademark class

A trademark applicant can file a request to correct the type or condition that has been appropriately classified as per the classification of goods or services published by the Registrar. The reason for the complaint could be that the interests or services noted in the application do not fall into the appropriate trademark class. 

However, it is necessary to obtain proper legal advice for correctly classifying goods and services before submitting the answer to the examination report for objecting to the wrong trademark class category.

Objection Regarding Lack of Exclusivity in Trademark

In case of objection regarding non-exclusivity of the Trademark, the applicant may submit a reply to the examination report establishing that the Trademark applied for registration is capable of distinguishing the good or service of the applicant as the brand has acquired a distinctive character due to widespread use relating to the relevant goods or service before the date of application.

Let’s say that the Trademark has acquired exclusivity from its widespread use. In that scenario, the applicant should provide an affidavit and supporting papers as proof of use of the Trademark.

An Identical or Similar Trademark Complaint Exists

Suppose the complaint is on the relative grounds of refusal because of the same or similar trademark regarding similar goods or services. In that case, the applicant can also submit the consent or no objection from the owner of the marks quoted as conflicting in the examination report.

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