HOW TO FILE A REPLY TO THE TRADEMARK OBJECTION- PROCEDURE, DOCUMENTS REQUIRED AND FEES
INTRODUCTION
One of the first steps in the trademark registration procedure is a trademark objection. A trademark objection is not the same as a plain denial; rather, the trademark registrar is looking for a good cause or explanation for the mark and registration. The applicant is given the opportunity to explain how the trademark meets the requirements for legal registration.
Registrars frequently raise objections to an applied trademark if it breaches trademark registration regulations and laws during the registration process. After reviewing the trademark application, the Registrar may file an objection under Section 9[i] and/or Section 11[ii].When the status of a trademark is listed as “objected” on the official website of the Indian Trade Mark Registry,[iii], it signifies that the trademark examiner has registered an objection against the trademark in the examination report.
A complete reply to a trademark objection must be filed within a month of the date of issuing of the objection. Trademark objections can be based on a variety of factors, including similarity to an existing trademark, offensive trademarks, lack of novelty, and so on. A trademark registration gives a brand identity and distinguishes it from competing services or products on the market. If a company wishes to keep its distinct identity, it is critical to protect its trademark. However, there are times when someone will try to prevent you from exercising your right. As a result, we must comprehend the concept of trademark objection.
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THERE ARE PRIMARILY TWO REASONS FOR TRADEMARK OBJECTION:
- It contains information that is inadequate or incorrect.
- There are existing trademarks that are similar to yours.
TOP REASONS FOR TRADEMARK OBJECTION
Here are some of the reasons for trademark opposition:
Objections to trademark applications can be made for a variety of reasons. An examiner can object to a trademark registration on the following grounds:
The reasons for trademark registration refusal can be divided into two categories:
- Absolute grounds of refusal: refers to a mark’s inability to be distinguishable or graphically presented.
- Relative grounds of refusal: are always linked to previous trademarks and their associated rights.
A) MARKS THAT ARE DECEPTIVE
Any trademark that is likely to cause confusion among consumers due to a feature of the word mark or its use, such as the nature, quality, or geographical origin of the goods and services.[iv]Form TM-16 can be used to overcome a deceptive trademark objection.
B) LACKS DISTINCTIVE CHARACTER
Trademarks that are unable to distinguish one person’s goods and services from those of another are devoid of distinctiveness and may be challenged under the absolute grounds for trademark refusal.
C) EXISTENCE OF AN IDENTICAL TRADEMARK
An objection can be raised if different trademark owners have similar or identical trademarks on file for similar or identical descriptions of goods or services.[v]
D) FALSE OR AMBIGUOUS PRODUCT DESCRIPTIONS
Let’s say the product or service specification is too broad or covers a wide range of products or services. In that case, the trademark registrar can file an objection as follows:
“The goods/services specification for class xx is extremely broad and ambiguous. You must provide specific items for which the trademark is sought to be registered when filing a request on form TM-16.”
E) FALSE ADDRESS ON TRADEMARK APPLICATION
If the TM applicant has not specified the principal location where the business is situated correctly or if the address for such service in India has not been specified. A trademark objection can be made.
F) INCORRECT NAME OF THE TRADEMARK APPLICANT.
The applicant must correctly enter his or her name in the application. If the name on the trademark application is incorrect, the examiner will object as follows:
“Because the application appears to have been filed in the name of a partnership firm, the names of all of the firm’s partners should be added to the record by filing a request form TM-16.”
G) INCORRECT TRADEMARK REGISTRATION
If the trademark application is not filed on the proper form, the examiner will raise the following objection:
“For certification marks in respect of goods or services falling into a class, the application should be corrected as TM-4 by filing a request on Form TM-16.”
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THE PROCESS OF TRADEMARK OBJECTION
When the registrar determines that the application is subject to objection, the application’s status is changed to OBJECTED. The trademark agent will receive a copy of the examination report along with the reason for the objection, and the applicant will have 30 days to respond to the objection.
STEP ONE: EXAMINE THE FINDINGS OF THE EXAMINATION REPORT
The first step is to go over the examination report and figure out why the objection was raised.
STEP TWO: DRAFT RESPONSE TO THE OBJECTION
The next step is to prepare an objection reply that includes a proper response to the objection raised, as well as supporting the rule of law and judgments, as well as other documents and evidence that validates the response.
STEP THREE: RESPONSE DEADLINES
The response to the objection must be filed with supporting documents within 30 days of the examination report.
STEP FOUR:
IF THE RESPONSE IS ACCEPTED
If your response has been accepted, the application will be processed further for trademark registration and publication in the Trademark Journal.
IF IT ISN’T APPROVED
If your response has not been accepted, the Registry will schedule a hearing and notify the Trademark Agent of the date and time.
A DETAILED PROCESS TO FILE A TRADEMARK OBJECTION RESPONSE
When an objection is filed, the trademark’s status in the Indian Trademark Registry is changed to “Objected”. In this step, you need to file a response to a trademark objection which is as follows:
STEP 1: EXAMINING THE TRADEMARK OPPOSITION
The first step is to carefully analyze and study the objection, as any ambiguity in understanding can result in an incorrect Trademark Objection Response being filed.
STEP 2: DRAFTING A RESPONSE TO A TRADEMARK OPPOSITION
Thereafter, you need to draft a trademark response that includes the following information:
- A proper response to the objection raised, including supporting the rule of law, precedents, and judgments.
- The distinctions between the conflicting mark and the applicant’s mark.
- Other supporting documents and proof that the response is correct.
- An affidavit stating the applicant’s use of the trademark on its website and social media channels; media advertisements; publicity materials; availability of trademarked products on e-commerce sites, and so on, along with documentary proof.
- The Trademark e-filing portal is then used to file the response draft.
STEP 3: HEARING ON A TRADEMARK
The application shall be processed ahead for registration and publication in the Trademark Journal if the response is accepted. If it is not accepted, or if the Trademark Examiner requests additional clarifications, a trademark hearing will be scheduled, and the public will be notified.
STEP 4: TRADEMARK JOURNAL PUBLICATION
If the hearing results in a positive decision, the mark will be accepted and published in the Trademark Journal. If the outcome is negative, the Refusal Order will be issued, stating the reason for the refusal. The applicant could still appeal the order by filing a review petition within 30 days of the Refusal Order’s date, stating the grounds for review.
STEP 5: FILL OUT THE REGISTRATION FORM
Your trademark will be open to scrutiny for four months after it is published in the Trademark Journal. If no third-party oppositions are filed within that time frame, the mark will be registered, and the Registration Certification will be issued. If an objection is filed, the opposition process will proceed according to the law’s rules.
WHAT IS A TRADEMARK OBJECTION REPORT?
A Trademark objection report is a report provided by trademark examiners that keeps the grounds, reasons, and facts behind why a trademark application is being challenged hidden. Following the evaluation of the application, the Registry issues an examination report and determines whether or not the application can be accepted. If the trademark was accepted, the registrar proceeded to publicize it. It’s posted on the trademark office’s website, along with the application’s data. If the trademark examiner raises an objection, the applicant or authorized agent has the opportunity to respond to the trademark examination report with a rebuttal.
The cause for the objection must be included in the trademark examination report. The applicant has 30 days from the date of the examination report to respond. A well-written objection response will ensure that you have good reasons to believe that your application will be accepted. In addition, the response to the trademark examination report should be written with legal knowledge, citing previously decided cases on identical issues as well as decisions by Tribunals/Courts/International authorities. The application would be authorized to be published in the Trademark Journal before registration if the Trademark Examiner thinks the response sufficient and it answers all of the questions made by him/her in the Examination Report trademark.
EXTENSION OF TIME TO FILE A REPLY TO AN OBJECTION
The application shall be declared abandoned if the reply is not filed within 30 days following the report. By submitting TM-M electronically through the trademark agent and providing a sufficient explanation for the delay in filing the reply, the applicant can obtain a 30-day extension from the registrar. A new Power of Attorney is required if the response to the examination report is to be filed through a different trademark agent. After you’ve completed the submission, you’ll need to write an objection response.
CONSEQUENCES OF FAILURE TO FILE A REPLY
A timely response to a trademark objection is an important part of the trademark registration process. The Trademark Registry will label the Trademark application as abandoned if the reply to the examination report is not filed within 30 days of notice / or by the extended deadline. If the application has been listed as abandoned, the applicant must file a new Trademark application.
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REQUIREMENTS FOR RESPONDING TO A TRADEMARK OPPOSITION
- WITHIN 30 DAYS, YOU MUST REPLY: Within 30 days of receiving the objection, the applicant must respond. The application shall be declared abandoned if the reply is not filed within 30 days following the report.
- EXTENDING THE DEADLINE FOR SUBMITTING A RESPONSE BEYOND 30 DAYS: In Form TM-M, the applicant can request an extension of time to provide a reply, along with the required fee of INR 900.
- DOCUMENTATION REQUIRED: A formal response to the examination report must be supplied, along with sold clarifications and evidences, explaining why the application should be allowed. The required documents are listed below:
- Power of Attorney
- Examiner’s Report Reply
- Documentary proof of trademark use in commercial settings, such as invoices, letterheads, and communications, business cards, screenshots of websites, brochures, financial statements, and other evidences.
POINTS TO BE KEPT IN MIND
- The existing trademark registration application will be saved from being abandoned or rejected and will be considered for further processing. This saves both time and money because there is no need to submit a new application.
- Your trademark is likely to be registered, allowing you to take advantage of all legal rights and protections against infringement.
- Filing a timely response on proper grounds and with supporting evidence will demonstrate that you are not infringing on the rights of other trademarks that are already in use.
- If you do not reply to the objection within the required time frame, your right to use TM with your brand logo will be revoked.
- Giving you a stronger hand, your trademark will be stronger and will always create a sense of uniqueness for your brand while standing out in the market.
- You should always have proofs that your brand is unique, as this will provide you with immunity against any infringement claims of third-party trademarks or brands.
CONCLUSION
It’s just as important to maintain a brand as it is to create one. The timely filing of a trademark objection reply can help you save time, money, and your company’s reputation. Failure to do so may result in the trademark application being abandoned. Make sure your brand name isn’t on the list of names that aren’t allowed to be used. To avoid any problems, thoroughly examine the brand name before filing the registration application.
[i]Section 9 of the Trademarks Act, 1999.
[ii]Section 11 of the Trademarks Act, 1999.
[iii]https://ipindia.gov.in/trade-marks.htm
[iv]Section 9 (1) of the Trademarks Act, 1999.
[v]Section 11 of the Trademarks Act, 1999.
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