Trademark Objection in - How to Reply

Introduction

Trademark objection is an essential part during the trademark registration process but it is not compulsory that every trademark face this objection. There are several absolute grounds such as similarities, lack of distinctiveness and wrong classification which may lead to objections. This objection is mainly covered under Section 9 and Section 11 of the Trademark Act, 1999. Trademark objection mainly happens when the examiner finds any similarities and insufficient data or information which is filed along with the Trademark application. TM objection helps to ensure that only suitable trademarks are registered which aids to avoid consumer confusion and protect existing brand reputation. Every trademark applicant must have the complete understanding over the trademark objection that helps to handle this scenario if it happens during their registration process. In this article you will get comprehensive details on Trademark Objection including its meaning, reasons, stepwise process to reply and documents.

What is Trademark Objection?

Trademark Objection is a stage of the Trademark Registration process where the examiner raises concern about the applied trademark. Section 9 and 11 of Trademark Act, 1999 covers the Trademark Objection on the basis of similarities, descriptiveness of the mark or other absolute grounds. Having a Trademark objection during the trademark registration process doesn’t mean the application can't proceed. After getting an objection the applicant must respond to the Trademark objection within 30 days from receiving the notice of objection.

If the applicant is unable to respond to an objection within the timeline, the application’s status will be changed to “Abandoned”.

Reasons for Trademark Objection

According to the Section 9 and Section 11 of Trademark Act,1999 there are some reasons given below for Trademark Objection :

• Similarities: If any trademark already being registered and other applicants applied for the same to make confusion among the consumers, will face objection by the department. Suppose “Smell Good” is a big perfume brand and someone wants to register their trademark for the same name as well as class, they will have to face an objection.
• Descriptive: There are many generic names or places which can not be registered as a trademark. For example - Himachal is a state and a generic name and someone wants to register “Himachal” for their cold drink and other product or service name as a brand so it is not possible. Therefore, the applicant must choose a name carefully which does not have a generic name.
• Lack of Distinctiveness: Any trademark which is not able to distinguish a goods and service from another trademark or brand name leads to an absolute ground for trademark objection . For example a person has the trademark on “Garland Bar” and someone applied for the trademark for “Garland Cafe” , both names have a lack of distinctiveness and it is an absolute ground for objection.
• Offensive and Vulgar name: If any applied trademark has any offensive and vulgar name or mark which may harm someone's religious and emotional sentiments, can not be registered as a Trademark. These types of mark or name have higher chances to face trademark objection .
• Wrong Form Filing: There are some specific forms and applications which must be attached with the Trademark application such as Form TM-48 for power of attorney. If the applicant has filed the wrong form or missed to file these forms may lead to Trademark Objection.
• Incorrect address and TM class: The applicant address and Trademark class selection must be appropriate. If any applicant files with the wrong address and class, may face trademark objection.

Process for Trademark Objection Reply

Step 1: Analysis for Trademark Objection

When the Trademark Objection is raised from the trademark examiner, there may be several reasons. Therefore, after receiving objection notice the applicant must identify under which section their objection falls. It can be a complex procedure therefore seeking professional guidance is essential.

Step 2: Draft a Reply

After detecting the objection reason, draft a reply on the basis of objection reasons. Reasons and facts that support the applicant's side along with the supporting documents such as invoices, bills and other relevant data must be in reply draft. If the trademark is used for any digital platform supposed for an E-commerce platform, an affidavit must be included.

Step 3: Trademark Objection Reply Filing

Once the Trademark draft has been done, then the next step is to file Trademark objection reply within the specified timeline which is usually 30 days from the receiving trademark objection notice.

Step 4: Appear for Show Cause Hearing

After receiving the Trademark objection reply, the trademark checks each detail if provided details are acceptable so it can be waived on the basis of the given response. But if the examiner does not accept this response they will conduct a “show cause hearing” and will notify the applicant to appear.

On the official portal of Trademark, the trademark officer will notify the date and timing of the hearing. At the hearing the applicant will appear along with their supportive documents and evidence. If the officer is satisfied with their proofs the trademark will be sent to the TM Journal. If no one appears in hearing on time the trademark will be abandoned.

Step 5: TM Journal publication and Registration

TM journal is a weekly publication that lists trademarks that have been accepted for registration in India. A trademark registered in the trademark journal gives the public the opportunity to oppose the registration if they find the registration will damage their brand reputation. This trademark journal opens for 90 days from the application approved by the registrar.

The trademark registrar will accept the application if opposition is raised or if in case acceptance after the objection, a trademark certificate is issued by the trademark registrar.

Required Documents for Trademark Objection Reply

Here is the complete documents list for Trademark Objection reply given below:

• Examination Report of Trademark
• Authorisation TM-48
• Applicant Identity Proof
• Applicant Address Proof
• Affidavit of usage
• Other supportive documents and evidences

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Conclusion

Trademark Objection can be an obstacle in trademark registration. There are many absolute grounds for the objection including misinformation, wrong application filing and similarities as well. Therefore it is crucial to conduct Trademark search to avoid this stage. In trademark objection the trademark officer notifies about the objection then the applicant has to file their reply within 30 days from receiving the objection notice. The objection reply must be drafted along with the relevant proofs that may define the applicant side. Trademark Objection reply is a complex procedure that requires professional guidance. Connect with Bizfoc for objection reply under the experienced and professional experts guidance.

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