A Trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises and may include shape of goods, their packaging and combination of colours, which identifies products or services of a particular source from those of others, although trademarks used to identify services are usually called service marks. Once a trademark application is filed, the Trademark Registrar will process your application and issue an Examination Report. But due to some valid reasons, trademark Registrar can have objections on any trademark application which does not meet their legal norms. The applicant gets an opportunity to prove how his/her Trademark fits the criteria for availing the valid registration within the stipulated period of 30 days from the date of the receipt of the Examination Report.
Reasons for Trademark objection
- Other grounds such as deception etc.,
- Incorrect Name of the Trademark Applicant
- Incorrect Address on the Trademark Application
- Failure in filing Trademark Form TM-48
- Filing of Incorrect Trademark Form
- Trademark filing under the Wrong Trademark Class
- The proposed Trademark already exists
- Trademark lacks distinctive character
- Vague specifications of Goods and Services
- Deceptive Trademark
- User affidavit not attached
- Contains incomplete/wrong information
- Authorization letter
- Affidavit of usage
- Examination report
- Trademark hearing notice
- Documentary proof of Trademark in commercial use.
- The duly appointed applicant or the attorney has to appear before the authorities, on the scheduled date.
HOW TO FILE A TRADEMARK OBJECTION
When an objection is raised, the status of the trademark in the Indian Trademark Registry will be marked as “Objected”. The following are the steps to file a response in the event of a trademark objection.
Step 1: Analyzing Objection Report
The first step involves analyzing and studying the objection or examination report carefully, as any ambiguity in understanding can lead to incorrect filing of Trademark Objection Response.
Step 2: Drafting Of Trademark Objection Response
The next step is to draft a trademark reply which should include the following:
- A proper answer to the objection raised with supporting rule of law and precedents and judgments supporting the case
- Other supporting documents and evidence that validates the response.
- An affidavit stating the usage of the trademark in the applicant’s website and social media channels; advertisement in the media; publicity material; availability of trademarked products on e-commerce sites, etc. along with the documentary proof for the same
- The differences between the conflicting mark and the mark of the applicant.
- The response draft is then filed online on the Trademark e-filing portal.
Step 3: Hearing of the Matter
If the objection is accepted, the application will be processed further for registration and advertisement in the Trademark Journal. If it is not accepted, or there are additional clarifications sought by the Trademark Examiner, there would be a trademark hearing scheduled and the same will be notified with a notice to applicant or attorney. (If Trademark registration is done by attorney).
Step 4: Publication in the Journal
If the outcome at the hearing is positive, the mark will be accepted and will be ordered to be published in the Trademark Journal. In the event of a negative outcome, the Refusal Order will be passed, explaining the reason for the refusal. The applicant still would have the option to appeal the order by filing a review petition within 30 days from the date of the Refusal Order mentioning the grounds on which the order must be reviewed.
Step 5: Registration
Once your trademark is published in the Trademark Journal, it will be open to scrutiny for a period of four months. If no third-party oppositions are filed within that period the mark will then proceed towards registration, and the Registration Certification is issued. If an objection is filed the opposition proceedings will take place as per the prescribed rules of the law.