ONLINE TRADEMARK OBJECTION REPLY | REPLYING TO THE TRADEMARK EXAMINATION REPORT

INTRODUCTION

The trademark division of the IP office is now working at breakneck speed, issuing a large number of examination reports to clear its backlog. In general, examination reports pertaining to any trademark applied for were examined after 8-9 months had passed from the date of filing of the trademark application.

However, the examination report is now issued within 1 to 2 months. As a result, it’s a good idea to check on the status of your trademark application every 1-2 weeks. On the IP India website, there is a notification in this regard.

After you file a trademark, it must go through an examination process and, if necessary, a hearing.

A trademark application is examined by the Trademark Registry within six to one year of its filing date. If the Registry has any objections to the application’s registration, such as the trademark’s distinctiveness, not meeting the act’s qualifications, existing similarity with prior registrations, or the filing of supporting documents, an Examination report is issued.

The trademark office will issue an acceptance order, and the trademark will be published in the journal if a mark is accepted during the examination. A trademark, on the other hand, is rarely accepted without opposition. If the examiner objects to the registration of a trademark while examining the application, the applicant or his agent must respond within one month of receiving the examination report. Now, figuring out what these objections are and how to overcome them is a skill in itself.

For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.

WHAT IS A TRADEMARK EXAMINATION REPORT?

A trademark application goes through several stages, one of which is the Registry Examination. According to the Trade Marks Act and its Rules, an officer would examine the application and check for any errors or correctness.

Following the review, an examination report is issued, along with the examiner’s comments. If there are no conflicts with the rules or other trademarks, it is sent to the Journal for publication. In the event of a conflict, the examiner will raise an objection and notify the applicant/attorney to submit a response explaining why the application should be advanced to the next stage. Failure to respond might results in the application being abandoned, forcing the applicant to respond to the Registry’s examination report.

WHAT IS A TRADEMARK REPLY?

When the Trademark Examiner objects to the Trademark application on technical grounds, an objection reply is required. The trademark may be challenged under Sections 9 or 11 of the Trademark Act of 1999. The Trademark Department will file Section 9 (1) (a) and (b) objections if the Applied Mark does not have its own identity or if the applied mark designates related goods or services. Similarity issues with an existing trademark are grounds for an objection under Section 11 of the Trademark Act 1999. If there is a slight difference in spelling or the applied mark, it does not qualify for registration if it is similar to an existing mark.

WHY IS IT NECESSARY TO RESPOND TO A TRADEMARK OBJECTION?

ABANDONMENT PREVENTION

To proceed to the next stage of the registration process, you must submit a response to the examination report. If the reply to the trademark objection report is not filed within a month of the date of dispatch of the said report, the entire TM application will be abandoned.

ESTABLISH THE UNIQUENESS OF YOUR BRAND

The opportunity to present the grounds for why the applicant is entitled to have his or her mark registered is provided in the Trademark objection reply letter. With a written response to the report, one can argue that the objections do not apply to the TM application and demonstrate the mark’s distinctive features.

HOW DO YOU RESPOND TO A TRADEMARK OBJECTION?

Within two months of receiving the notice, a trademark objection reply must be filed. When filing a trademark objection reply, you must follow the steps outlined below:

IDENTIFYING AND ANALYSING THE OBJECTION

The trademark objection should be thoroughly researched and analyzed. Any ambiguity or confusion may result in the trademark objection reply being filed incorrectly.

DRAFTING A REPLY TO A TRADEMARK OBJECTION

The following should be included in the trademark objection reply letter:

  • With supporting rule of law, precedents, and judgments, a suitable response to the objection was provided.
  • The differences between the applicant’s trademark and the mark in dispute.
  • To validate the reply/response, additional evidence and supporting documents are required.
  • An affidavit stating the applicant’s use of the trademark on its website and social media channels, as well as media advertisements, publicity material, and the availability of trademarked products on e-commerce sites, among other things, as well as supporting documentary evidence.

The trademark objection reply letter draft is then submitted via the Trademark e-filing portal.

For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.

HEARING ON A TRADEMARK

The Registrar of Trademark may call both the parties involved for a hearing after the trademark objection reply letter is filed. He will then take his decision based on the parties’ submissions. If he rules in favour of the person applying for the trademark, i.e., applicant, the trademark will be registered. The filed application will be rejected, and the trademark will be removed from the Trademark Journal if he rules in favour of the opposing party.

APPEAL AND PUBLICATION IN THE TRADEMARK JOURNAL (IF REQUIRED)

IPAB will hear a case after it has been registered. The IPAB will determine the location based on the jurisdiction in which the case falls. The date of the case’s hearing will be set. The following is the schedule for the hearing:

  • The case will be decided based on the submissions of both parties.
  • In the event that a party fails to appear at the hearing, the IPAB has the authority to:
  • Make a decision on the case’s merits.
  • Make an ex parte order (in the absence of one party)
  • The case should be dismissed.

The trademark may be accepted by the Registry and published in the Trademark Journal if the ruling at the hearing is in favour of the applicant.

The applicant still has the option to appeal to the Intellectual Property Appellate Board if the decision is not favourable (IPAB).

POINTS TO BE KEPT IN MIND:

  • The petition/appeal for review must be filed within 90 days of the refusal order’s date, and it must state the grounds for the review.
  • If the application is submitted after 90 days, the applicant must state the reason(s) for the delay. If the IPAB agrees with the reason, the appeal will be heard (s).
  • Form-2, as described in the Trademark Rules, must be filed if the registration application is for a single class. In this case, the trademark objection reply fee is INR 5000.
  • Form-3 must be filed for the appeal if the registration application was for two or more classes. In this case, the trademark objection reply fee is INR 10,000.
  • The applicant must verify the application and have it endorsed by the Deputy Registrar for accuracy before submitting the required trademark objection reply fees.
  • If the deputy registrar discovers any flaws in the application, he will issue a notice. Within two months, the applicant must correct all defects and resubmit the application. The application will be abandoned if it is not completed.
  • When the Deputy Registrar is satisfied, the case will be registered by assigning a serial number.

The IPAB will hear the case at a convenient time and location. After hearing the parties involved, it will make a decision and issue an order. When a case is dismissed, or an ex parte decision is made, the applicant has 30 days to file a petition on an earlier order. If the applicant is still unhappy with the IPAB’s decision, he can take his case to the concerned High Court and then to the Supreme Court of India.

REGISTRATION

The trademark will be subject to review for four months after it is published in the Trademark Journal. The mark will be transferred for registration, and the Registration Certification will be granted if no third-party oppositions are lodged within this time frame. If any objection is received, proper legal action will be taken in accordance with the rules of law.

WHAT SHOULD BE INCLUDED IN A TRADEMARK OBJECTION RESPONSE?

  • Respond to the registrar’s objections in a systematic manner;
  • Then, to support your trademark office’s response, attach the supporting case laws;
  • Documents supporting the uniqueness of your trademark;
  • Along with the reply, an affidavit demonstrating that the trademark is unique and associated with the goods and services must be filed.

The applicant should keep an eye on the cited objection raised while drafting the response. A good response will increase your chances of getting a hearing, which will speed up the trademark objection response process.

A good IPR attorney focuses on every small detail of the objections raised as part of the reply process. If the applicant’s response fails to satisfy the trademark office, he may submit his application orally. Hearings are held by the Assistant Registrar or the Senior Examiner of Trademarks.

 IMPORTANT POINTS TO BE NOTED

  • The applicant should carefully read the Notice of Opposition.
  • Every allegation made in the Notice of Opposition must be refuted.
  • Every statement in support of the application must be accompanied by proof.
  • All documents submitted in support of the applicant must be valid and legal, allowing them to be presented in any future proceeding.
  • The applicant’s mark should be distinguished from the opposition’s mark, according to the counter statement.

CONCLUSION

If the applicant’s trademark is rejected, he or she should not be concerned. The applicant saves time and money by filing a Trademark Objection Reply. To avoid the application being abandoned, the applicant must respond to trademark objections within the time frame specified. Not only does a successful IPR attorney concentrate on all minor information over objections posed during the examination process, but he or she also performs a detailed search before applying for any trademark.


For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.