Share your content details and receive free consultation

Submit documents for your order using online dashboard

Make online or offline payment for your order

Work will be completed by us and updates delivered online

Trademark infringement occurs when someone uses a registered trademark without the owner’s authorization or beyond the scope of any granted license. This violation involves using a mark that is identical or confusingly similar to an existing registered trademark, in connection with goods or services that are identical or similar to those covered by the registration. The trademark owner has the right to initiate legal action against the infringer to protect their exclusive rights.

A trademark that is not registered cannot be infringed in the legal sense, preventing the trademark owner from initiating infringement proceedings. However, the owner can pursue legal action under common law for passing off or misrepresentation, or under laws prohibiting unfair business practices. In some jurisdictions, infringement of trade dress may also be actionable.

To prove infringement of a registered trademark, it is only necessary to demonstrate that the infringing mark is identical or deceptively similar to the registered mark, without needing additional evidence. Trademark infringement involves unauthorized use of a trademark—whether a symbol or design—that resembles the products or services of another party. The trademark owner can initiate legal proceedings against the infringer.

There are two remedies available for unauthorized use of a trademark: an action for passing off in the case of an unregistered trademark and an action for infringement in the case of a registered trademark. An infringement action is a statutory remedy, while passing off is a common law remedy.

In cases of trademark infringement or passing off, a criminal complaint can also be filed. Under the provisions of the Trade Marks Act, 1999, offenses are cognizable, meaning the police can register a First Information Report (FIR) and prosecute offenders directly.

If a proposed trademark is identical or too similar to an existing one, such as “luxuary” and “luxuary,” it falls under Section 11(1) of the Trademarks Act. Similarly, single-word trademarks, whether as a prefix or suffix like “Newsnow” or “Nownews,” must be distinctive from one another, including their marks or logos. Issues may arise if the trademark logo is unclear or does not conform to specified dimensions.

Common objections include:

• Filing under the wrong trademark class.
• Vague specifications of goods and services.
• Missing affidavit attachments.
• Lack of supporting documents for the applicant.
• Use of common or geographical names, which fall under Section 9 of the Trademarks Act.
• Filing incorrect trademark forms.
• Failure to file Trademark Form TM-48 (Power of Attorney).

• Authorization Letter
• Examination Report
• Supporting Evidence of Logo Ownership
• Trademark Hearing Notice, if applicable
• Affidavit

Filing a trademark objection reply is essential to avoid losing brand protection or having the application abandoned.
Understanding the Objection Ground
The first step is to thoroughly analyze the examination report to identify the specific reasons for the objection. Misinterpreting the objection can lead to an incorrect response, potentially jeopardizing the application.
Drafting the Reply
The next step is to draft a well-structured reply. This should be done by legal experts such as lawyers or trademark attorneys, who can reference relevant case laws. The reply must be submitted within one month of receiving the objection notice. Failure to respond within this timeframe could result in the trademark application being marked as abandoned.
Modifications and Government Fees:
In some cases, the reply may involve modifications, such as deleting or adding a word, or correcting the goods or services listed in the specific class. These changes may require the payment of additional government fees.
Timelines for Reply:
The reply must be submitted within 30 days of receiving the examination report, along with all necessary supporting documents. Missing this deadline could result in the application being deemed abandoned.
Outcome of the Reply:
Accepted Reply: If the reply is accepted, the application will proceed to the next stages of registration and be advertised in the Trademark Journal.
Rejected Reply: If the reply is not accepted, the matter will be scheduled for a hearing, and the date and time will be communicated to the trademark agent

Common Grounds for Trademark Opposition:
Already Registered: Opposition by the owner of a previously registered trademark for a similar product.
Prior User: A person who has used the same or a similar trademark before the applicant but has not registered it.

Trademark Opposition Process:
1.Notice of Opposition
Any person can file an opposition against a trademark listed in the Trademark Journal within four months from its first publication. The opposition must be filed at the same office where the original trademark application was submitted. Trademark offices are located in Mumbai (headquarters), Ahmedabad, Chennai, Delhi, and Kolkata.
Counter-Statement
Under Rule 44 of the Trademark Rules, 2017, the applicant can file a counter-statement within two months (non-renewable) of receiving the opposition notice (Form TM-O). Failure to file the counter-statement results in the application being deemed abandoned.
2. Evidence Supporting the Opposition:
According to Rule 45 of the Trademark Rules, 2017 the opponent must submit evidence supporting their opposition within two months of receiving the counter-statement. This period can be extended by one month. Alternatively, the opponent can choose to rely solely on the notice of opposition.
3. Evidence Supporting the Application
After the opponent’s evidence submission, the applicant has two months to provide evidence in their favor, as per Rule 46 of the Trademark Rules, 2017. The applicant can also choose to rely solely on their counter-statement.
4. Response to Evidence:
Under Rule 47 of the Trademark Rules, 2017, the opponent can submit a response to the applicant’s evidence within one month, extendable by another month. After this phase, no further evidence can be submitted unless an interim application is filed with additional costs and terms at the discretion of the Registrar.
Hearing and Decision:
After the evidence phase, the Registrar sets a hearing date and notifies the parties. The hearing is based on the notice of opposition, counter-statement, and submitted evidence. Both parties must inform the Registrar of their intent to appear at the hearing. The hearing can be postponed upon submission of a request in the prescribed form.

Registrar’s Decision: After hearing both parties and examining the evidence, the Registrar decides whether the opposition is successful. If the decision is unfavorable, the aggrieved party can appeal to the Intellectual Property Appellate Board.

1. Filing of Trademark Application
   Begin by submitting the trademark application.
2. Formality Check / Vienna Codification
   The application undergoes a formality check and is assigned a Vienna codification if it includes figurative elements.
3. Examination / Objection / Hearing
   The trademark is examined for compliance, and any objections raised must be addressed. If necessary, a hearing is conducted.
4. Publication in Trademark Journal / Opposition / Hearing
   If approved, the trademark is published in the Trademark Journal. Third parties can file oppositions, which may lead to hearings.
5. Registration of Trademark
   If no opposition is filed or after successful resolution, the trademark is registered.

The reply to the Examination Report must be filed within 30 days (1 month) of receiving the report, along with supporting documents. The reply should be drafted by legal experts, such as lawyers or trademark agents, referencing relevant case law, recent judgments, and international precedents.
Extension of Time to File Objection Reply
If the reply is not submitted within the 30-day period, the application may be marked as abandoned. Applicants can request an extension by filing Form TM-M, paying a fee of INR 900, and providing a valid reason for the delay. This request must be submitted electronically through a trademark agent. Filing the reply within the stipulated time is crucial to avoid delays and prevent the trademark from being abandoned. If a different trademark agent is filing the reply, a new Power of Attorney is required.
Consequences of Non-Filing
Failure to file a reply to the examination report within the given time or the extended period will result in the application being marked as abandoned. In such cases, the applicant will need to file a new trademark application.
Importance of Trademark Objection
Addressing a trademark objection is a critical step in the trademark registration process. If a reply to the examination report is not filed within 30 days or within the extended timeframe, the Trademark Registry will mark the application as abandoned or neglected.