PROCEDURE FOR TRADEMARK OPPOSITION IN INDIA AND TRADEMARK OBJECTION REPLY
In present blog, we will read about procedure for trademark opposition in India and how to file trademark objection reply.
INTRODUCTION
The globalization of trade raised the significance of trademarks, brand marks, Brands, etc., to an elevated extent, which requires uniform minimum protection standards and efficient procedures for their imposition. In this context, the old Trademarks and Merchandise Act,1958 was amended, and the new Trademarks Act, 1999 was enacted. The aforesaid Act of 1999, with resulting amendments, is in line with the present International systems and practices.
Trademark, as defined under Trademarks Act, 1999.
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“A mark which is efficient to be represented graphically and is suitable for distinguishing the goods and services of one person from those of other persons and may comprises the shape of the products included, their packaging and color combinations, etc.”
In addition, the law also provides the definition on ‘mark’ under section 2 (m) of the Act, which lists ‘mark’ as a device, a brand, a title, label, ticket, name, signature, word, letter, number, the shape of the product, or color combination or any other combinations thereof.
Trademark is covered under intellectual property rights. Intellectual assets rights allow citizens to hold possession rights in their advanced products and progressive activities. The intellectual property came to existence due to the efforts of human labor, so it is far constrained by means of some expenses for the registration and fee for infringement.
There have been some positive amendments completed with inside the older Act earlier than it was enacted as a brand new one in 1999-
-Provision was made for trademark registration in the context of offerings similar to goods.
-Statutory safety was prolonged to famous trademarks.
-Widened the scope and purview of ‘trademark’ in India.
-Amenities for registration of collective marks.
-Incorporated provision to prevent the use of a trademark as a company or trade name by a third party.
The purpose of the Trademarks Act, 1999 is to provide safety to the users of trademark and direct the conditions on the assets, and additionally offers legal treatments for the implementation of trademark rights.
REGISTRATION OF A COMPANY TRADEMARK
Any individual claiming to be the proprietor of the trademark or imagined the trademark with the aid of using it in future, for this he might also additionally follow in writing to the ideal Registrar in a prescribed way. The utility should incorporate the name of goods, marks, and offerings, the elegance of products and the offerings wherein it falls, the name and address of the applicant, and the period of use of the mark. Individual hereby refers to any affiliation of firms, partnership firm, a company, trust, State authorities, and Central authorities.
Terms of Registration
The Central authorities, with the aid of mentioning in the legitimate gazette, appointed an official referred to as The Controller, general of patents, designs, and trademark, who will be the Registrar of the trademark. The Central authorities might also additionally employ different officials if they suppose that they may be appropriate, for the reason of discharging, under the superintendence and path of the Registrar, the Registrar might also authorize them to discharge.
He has the authority to switch or withdraw the instances with the aid of using in writing with the motives mentioned. Section (6) of the Act mentioned the upkeep of a registered trademark. At the head office in which details of registered trademarks and other prescribed details besides the word of trust will be recorded. A copy of the register is to be saved at every department office. It offers the preservation of facts in computers or diskettes or in some other digital shape.
Absolute reasons for Refusal of Registration
Absolute reasons for the refusal of registration is described in section 9(1) of The Trademarks Act,1999. The trademarks which may be missing any distinctive traits or which is composed solely of marks or signals, which may be utilized in trade to signify the kind, fine, quantity, intended grounds, values, geographical origin.
It offers that a mark shall no longer be registered as a trademark if:
– It fraudulent towards the general public or causes confusion.
– There is any intent of harming spiritual susceptibility.
– There is an obscene or scandalous matter.
– Its use is prohibited. It presents that if a mark incorporates solely of (a) the form of products which form the character of goods or, (b) the shape of good which is needed to reap a technical end result or, (c) the form of products which offers a considerable fee of products, then it shall not be registered as a trademark.
Relative reasons for Refusal of Registration
Relative reasons are covered under section (11) of The Trademarks Act,1999. According to this section of the Act, a trademark can’t be registered if due to the fact –
1- Its identification with an earlier trademark and similarly of goods or offerings,
2- Its similarity to an earlier alternate mark and the similarity of the goods and there may be a possibility of confusion.
It additionally offers that a trademark can’t be registered that is equal or similar to an earlier trademark and the one that is to be registered for items and offerings which aren’t much like the ones for which earlier trademark is registered in the name of a specific owner if, or to the volume, the sooner the trademark is widely recognized among the nation. It similarly offers that a trademark can’t be registered if, or to the volume that, its use in India is prone to be averted via way of means of distinctive features of the law.
There are more sections which clarifies the left-out reasons for the refusal of registration-
Section (13) of the Act, under which a mark is for bided for registration in recognition of chemical merchandise on the grounds that it includes the name of a chemical detail or on the non-proprietary name.
Section (14) of the Act, under which an important consent of a person, whose portraits seems on the trademark, is required.
Section (15) of the Act, which governs provisions concerning to a registration of a trademark as “a series”.
Section (16) which governs provisions concerning to the affiliation of trademarks.
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UNDERSTANDING TRADEMARK OBJECTIONS
Trade objection is one of the preliminary tiers within side the trademark registration system wherein the trademark examiner objects on your application because of positive motives.
It’s not always an easy denial to your claim. However, the Registrar seeks legitimate motives or causes about the mark and its registrability. He offers the applicant a possibility to explain that how the stated trademark suits the standards to avail legitimate registration.
An individual’s application for the registration of his trademark can be objected by the examiner on various grounds as discussed in sections 9, 11, 13, etc. of the Trademarks Act, 1999.
But mainly, an application for registration is objected to under section 9 and section 11 of the Act.
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Read more: HOW TO FILE A REPLY TO THE TRADEMARK OBJECTION- PROCEDURE, DOCUMENTS REQUIRED AND FEES
Things which should be be kept in mind while filling an application for the registration of a trademark to avoid objections-
- Wrong form of trademark registration application –
if the application is submitted in the wrong form, the examiner will raise an objection. For example, the TM-48 form is used to register collective trademarks of various goods and services and to register trademarks of various goods and services.
2. The name of the trademark applicant is invalid-
The trademark must be registered under the correct name of the applicant, and the spelling must be checked.
3. Use of misleading and offense term-
If the trademark attempts to mislead or deceive customers with the incorrect product or service descriptions will be rejected.
4. Insufficient product/service information-
If the trademark application does not briefly mention the company’s products and services, the trademark appraiser will likely reject the application due to unclear information.
5. The mark should not be similar to any present trademark in the industry.
Trademark appraisers can raise objections under the trademark law, believing that doing so may cause confusion among the crowd.
When an objection is filed, the status of the trademark is marked as “disputed” in the Indian Trademark Register.
The following are the steps to respond to a trademark objection
Step 1- Analyze the trade objection-
The first step is to carefully analyze and investigate the opposition because of any ambiguity in understanding may lead to a false trademark objection response.
Step 2- Drafting response to the trademark objection or trademark objection reply.
The next step is to write a trademark response, which should include:
1- An adequate response to the objection raised, backed by the rule of law and precedents and judgments encouraging the case.
2- The differences between the objected mark and the mark of the applicant.
3- Other helping documents and evidence to approve the answer.
4- A statutory declaration indicating the use of the trademark on the applicant’s website and social media channels, Advertising in the media, Promotional material, Branded product availability on e-commerce sites, etc., along with supporting evidence.
5- Draft response will be submitted online to the e-brand submission portal.
Step 3- Trademark Hearing-
If the response is accepted, the application will be processed further for registration and promotion of the trademark journal.
In the event of non-acceptance or if additional clarification is requested by the trademark examiner, a trademark hearing will be scheduled and announced.
Step 4- Publishing it in the Trademark Journal-
If the result of the hearing is positive, the trademark is accepted, and publication in the trademark journal is ordered.
If the result is negative, the rejection notice is approved, stating the reasons of rejection, the applicant still has the opportunity to object to the order by filing a request for review within 30 days from the date of the rejection order, stating the reasons why the order should be reviewed.
Step 5- Registration-
As soon as your trademark has been published in the trademark journal, it will be examined for a period of 4 months. If no opposition from third parties is filed within this period, the trademark will be registered, and the registration certificate will be issued. All things are done according to the rules prescribed by the law.
Required Documentation-
– The letter of authorization
– The affidavit of the usage
– The report of examination
– Notice of hearing the trademark
– Proof of trademark in commercial use with proper documentation
– On the decided date, the duly appointed applicant or the attorney should be present there before the authorities.
After the publication of said marks, one needs to file an opposition against the said trademark, stating its objections, as provided under Section (21) of the Trademarks Act,1999.
A time limit of three 4 months is allowed for initiating proceeding of trademark opposition after it appears on the journal for the first time.
Once the trademark is opposed, the status of the trademark application will show as ‘Opposed’, and Registrar will be open to take evidence(s) as well as hear the party’s contentions to decide further.
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TRADEMARK OPPOSITION PROCEEDINGS IN INDIA
Section 21 of the Trademarks Act,1999 states that “any person” can file the notice of opposition, including any natural or legal person such as a corporation, partnership, etc., belonging to an Indian or overseas customer, member of the public or a competitor or other person.
When 2 or more people have the same problems against a brand, they can even merge together and oppose the same.
In general, the following individuals raise a trademark contradiction:
1- Already Registered- The owner of a previous trademark application or registration of a similar product.
2- Prior User- A person who has used the same trademark or a similar trademark before the customer has not registered his trademark.
The reasons and grounds available for filing a trademark opposition in India depend on the facts and the circle. Circumstances of each of the cases, however, some of the main reasons for opposing a trademark under the Trademark Act 1999 are mentioned above in this article.
The procedure for trademark opposition in India
Notice of Opposition:
Any person can file an opposition against a trademark that appears in the trademark journal within 4 months from the date of first publication. For each process, 74 different forms were initially available, which were modified in the trademark regulations in 2017. Currently, there are only 8 comprehensive forms that cover everything. The same office or branch office where the applicant submitted the original application for trademark registration. The headquarters of the trademark register is in Mumbai, and the offices are in Ahmedabad, Chennai, Delhi, and Kolkata.
Counter-Statement:
Rule 44 of the Trademark Act,2017, stipulates that the application for the registration of the trademark concerned can submit a counter-declaration within two months (non-renewable) after receiving the TM-O form after submitting the notice of opposition.
If the counter claim is not filed, the registration application which the applicant will be deemed abandoned, and the Registrar will remove it from the journal and disagree. The applicant can also do so based on an electronic copy of the notice available on the trademark register website.
EVIDENCE PRODUCED IN TRADEMARK OPPOSITION
Evidence supporting the opposition:
Rule 45 of the Trademark Rules, 2017 states that the opponent must provide evidence in support of their opposition within 2 months (renewable by one month) of receiving the copy of the counter claim filed by the attorney. The party also has the option of refraining from submitting evidence and relying solely on the notice of opposition.
Evidence supporting the application:
After the opponent has submitted evidence in support of its objection, the applicant also has 2 months to produce evidence in your favor. You also have the option not to present evidence and rely solely on the counter claim, as provided in Rule 46, Trademarks Act,2017.
Response to Evidence:
Under Rule 47, Trademarks Act,2017, the opponent is given an extra month (extendable for 1 month) to provide evidence in response to the applicant’s evidence.
At the end of this phase, the parties can no longer provide any further evidence. On request, additional testing for cost and terms at your own discretion. For this, the interested party must submit an interim application.
Hearing:
Once the Evidence phase is complete, the Registrar will notify the parties, the date of hearing which notification. The hearing is based on the notice of opposition, the reply, and the evidence submitted. The parties are obliged to inform the Chancellor of their intention to appear at the hearing. The hearing can also be postponed, and the request can be submitted in the prescribed form.
In the event of a complaint:
The Registrar, by hearing both parties and examining the evidence presented, decides whether the opposition is successful or not, and in turn, decides whether the trademark is registered or not the party complained. The party affronted by the Registrar’s decision can challenge it by filing an appeal with the Board of Appeal for Intellectual Property.
CONCLUSION:
Trademark plays a vital role in the progress of a company. It makes the brand stand apart from the competitive market and have a distinctive image and recognition. To make sure that your company trademark is safe and secure and is not being infringed, you must keep an eye on what’s going on in the market. While registering a trademark, one should keep in mind about the trademark availability and validity of the mark. The registration process should be followed correctly. Otherwise, your trademark will be objected by the Registrar. If your trademark is being used by an authorized individual without any acceptance, then you can file an opposition against it and can seek legal remedy under The Trademarks Act, 1999 and 2017, respectively.
References:
1- Manual of Trademarks – Ministry of Commerce and Industries, Government of India
2- The Trademarks Act,1999
3- The Trademarks Act, 2017
For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.