Trademark Objection

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What is Trademark Objection?

What is Trademark?

What are the types of objection raised under this?

What are the documents required for Trademark Objection?

How to File a Trademark Objection Reply in India?

Trademark Opposition and procedure for trademark opposition in India

What are the benefits of Trademark Objection?

Procedure how a Trademark Registration is done in India

Timelines for Filing Reply to Examination Report

FAQ’s

What is Trademark Objection?

The “Examination” stage is one of the most critical phases in the trademark registration process. It is the third stage, where the trademark undergoes detailed scrutiny by an examiner. Trademark objections, on the other hand, can be raised by various parties, including the applicant, proprietor, Registrar, or even third parties. However, the examination process is conducted exclusively by the examiner based on specific grounds and findings made during the evaluation of the application.

What is Trademark?

A trademark is a unique identifier, such as a name, word, label, symbol, or numeric character, used by a business to distinguish its products or services from those of other businesses. It serves as an exclusive identity for the goods and/or services, ensuring that consumers can easily differentiate one brand from another.

Once registered, a trademark becomes an intangible asset or intellectual property for a business, protecting the company’s investment in its brand or symbol. It helps safeguard the brand’s reputation and prevents unauthorized use by others.

However, certain types of trademarks cannot be registered. These include marks that are deceptive, generic, offensive, overly similar to existing trademarks, or that contain exclusively protected emblems or symbols.

What are the types of objection raised under this?

When a proposed trademark name is identical or confusingly similar to an existing trademark, such as “luxuary” and “luxuary,” it falls under Section 11(1) of the Trademarks Act. This section deals with marks that are likely to cause confusion or deceive consumers due to their similarity.

Trademarks consisting of a single word, whether as a prefix or suffix (e.g., “Newsnow” or “Nownews”), should be distinct from one another. The mark or logo should be unique enough to avoid any likelihood of confusion with an existing trademark.

There are various reasons why a trademark application may face objections, such as:

  • Unclear or Non-Compliant Trademark Logo: If the logo does not meet the prescribed guidelines or is not clear enough for proper recognition, it may be rejected.
  • Incorrect Filing of Trademark Forms: Filing the wrong form for trademark registration can lead to issues, particularly if form TM-48 (Power of Attorney) is not filed correctly.
  • Filing Under the Wrong Trademark Class: Each trademark is registered under specific classes depending on the nature of the goods or services. Filing under the incorrect class can result in rejection.
  • Vague Specifications of Goods and Services: If the description of the goods or services is not clear or is too broad, it can lead to objections.
  • Missing Affidavits and Supporting Documents: Failure to submit required affidavits or supporting documents can delay or prevent trademark registration.
  • Common Names or Geographical Terms: If a trademark is based on a common name or a geographical location, it may be objected under Section 9 of the Trademarks Act, which disallows registration for marks that are descriptive or lack distinctiveness.

These types of objections need to be carefully addressed to ensure the successful registration of a trademark.

What are the documents required for Trademark Objection?

Authorization letter;

Examination Report;

Supporting evidence of Logo ownership;

Trademark hearing notice, if any;

Affidavit

How to File a Trademark Objection Reply in India?

Filing a Trademark objection reply is compulsory otherwise one shall lose the brand protection or it may be abandoned.

Need to know the Objection Ground Carefully: The first crucial step in addressing a trademark objection is to thoroughly analyze the        examination report and identify the exact reason for the objection raised. It is important to fully understand the nature of the objection because              sometimes, due to misinterpretation, a wrong reply may be filed, leading to further complications or rejection. By carefully reviewing the                          objection, you can determine whether the issue is related to similarity with an existing trademark, improper classification, lack of                                       distinctiveness, or other grounds. Once the objection is understood clearly, a proper and well-informed reply can be drafted, which increases the             chances of successfully overcoming the objection and proceeding with the trademark registration process.

Prepare or draft a Reply :The second step is to finalize the draft reply with the accused party. Drafting the trademark reply requires the special skill and hence should be given to the respective expert like lawyers, attorneys etc. Recent case-laws. This must be done within 1 month from the date of receipt of the notice of objection, failure to file an objection within 1 month might change the status of the Trademark to Abandoned.

Sometimes Reply is done not just by drafting but by the way of TM-M   which includes government fees due to deletion of a word or adding a word or when goods or services written in the specific class is incorrect.

Timelines for reply :The response to a trademark examination report must be filed within 30 days from the date of receiving the report, along with any necessary supporting documents. If the response is not submitted within this timeframe, the application may be considered abandoned, and the trademark registration process will be halted. It is important to adhere to this deadline and provide a well-supported, accurate response to avoid delays or the abandonment of your trademark application.

If the Reply is accepted: If the response to the examination report is accepted, the trademark application will proceed further in the registration process. It will be advertised in the Trademark Journal as part of the final steps before official registration. This advertisement allows any third parties to oppose the registration within a specified period, after which the trademark will be formally registered if no objections arise.

If it is not accepted: If the response to the examination report is not accepted, the matter will be referred to a hearing. The registry will notify the Trademark Agent about the date and time of the hearing. During the hearing, the applicant or their representative will have the opportunity to present arguments and provide further clarification regarding the objection raised. Based on the hearing, a decision will be made regarding the trademark’s registration.

File TM objection Reply :Once the TM/Reply/Objection is finalized, it is advisable to file the reply online. Filing the reply online ensures that the response is processed and updated quickly in the trademark registry system, reducing the chances of delays. Online filing is efficient, and it provides a faster track for addressing objections or responding to examination reports.

We Need to understand Trademark Objection is a part of Trademark Registration without it further proceeding or we cannot go forward.

Objection and Opposition is two different things in which one gets confused

It is important to understand the difference between an objection and an opposition in the trademark registration process:

  • Objection: An objection is raised by the government examiner or an official at the initial stage after the trademark application has been filed. The examiner reviews the application and may raise objections based on various grounds, such as similarity with an existing trademark, lack of distinctiveness, or improper classification. The applicant is then required to respond to the objection, failing which the application may be abandoned.
  • Opposition: An opposition, on the other hand, can be filed by any person who has an issue with the trademark after it has been advertised in the Trademark Journal. Once the trademark is published, third parties have an opportunity to oppose the registration if they believe it could cause harm to their existing rights or interests. This opposition is heard before the Registrar of Trademarks, and a decision is made based on the evidence presented by both parties.

In short, objections are raised by the trademark office during the examination stage, while oppositions are filed by third parties after the trademark is published in the Trademark Journal.

Trademark Opposition in India

Section 21 of the Trademarks Act, 1999 states that “any person” can file a notice of opposition to a trademark application. This includes a natural or legal person, such as a corporation, partnership, individual, member of the public, customer, competitor, or any other party, whether from India or abroad. The opposition can be filed if the person believes that the registration of the trademark could harm their interests or rights.

When two or more people share the same concerns or objections against a particular trademark, they have the option to combine their efforts and file a joint opposition against the trademark application. This can be done if they collectively believe that the trademark, if registered, could cause harm to their interests or rights. By merging their opposition, they can present a unified case against the trademark in question.

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 for filing a trademark opposition in India vary depending on the facts and circumstances of each case. However, some of the primary grounds for opposing a trademark under the Trademark Act, 1999 include those mentioned in this article. Each opposition is unique and based on specific details related to the trademark application in question.
The procedure for trademark opposition in India

Notice of Opposition –Any person can file an opposition against a trademark that is published in the Trademark Journal within 4 months from the date of its first publication. The opposition must be filed at the same office or branch where the original trademark application was submitted. The headquarters of the trademark registry is in Mumbai, with branch offices located in Ahmedabad, Chennai, Delhi, and Kolkata.

Counter-Statement – Rule 44 of the Trademark Act, 2017 stipulates that the applicant for trademark registration can submit a counter-declaration within two months (non-renewable) after receiving the TM-O form following the submission of a 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.

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 for one additional month) of receiving a copy of the counter-declaration filed by the applicant. The opponent also has the option to refrain from submitting evidence and rely solely on the notice of opposition.

Evidence supporting the application – After the opponent has submitted evidence in support of their objection, the applicant has 2 months to submit evidence in their favor. The applicant also has the option to refrain from presenting evidence and rely solely on the counter-declaration, as provided under Rule 46 of the Trademark Rules, 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 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 of the hearing date. The hearing will be based on the notice of opposition, the reply, and the evidence submitted by both parties. The parties are required to inform the Registrar of their intention to appear at the hearing. The hearing can also be postponed, and a request for postponement can be submitted in the prescribed form.

In the event of a complaint – The Registrar, after hearing both parties and examining the evidence presented, will decide whether the opposition is successful and whether the trademark should be registered. If the party is dissatisfied with the Registrar’s decision, they can challenge it by filing an appeal with the Board of Appeal for Intellectual Property.

What are the benefits of Trademark Objection?

The owners of registered trademarks have the opportunity to prevent the use of any similar or identical trademark that could potentially harm or weaken the reputation of their existing trademark in the future.

They also have the exclusive right to use the trademark in relation to the goods and services offered by their business entity.

Legal protection: Once the trademark is registered, an infringement of the existing trademark can be sued by the owner.

The value in the market: A trademark helps standardize the products and services provided by a business in the market. This enhances the brand’s value, making it easier for customers, both existing and potential, to recognize the company or brand in the marketplace.

The right to use the symbol R: Once registered, one may use the symbol for goods and services listed in the registration.

To protect the trademark from getting abandoned or from rejecting it.

Procedure how a Trademark Registration is done in India

  1. Trademark Application Filing
  2. Formality Check / Vienna Codification
  3. Examination / Objection / Hearing
  4. Publication in Trademark Journal / Opposition / Hearing
  5. Registration of Trademark

Timelines for Filing Reply to Examination Report

The reply to the Examination Report must be filed within 30 days (1 month) of receiving the report, along with the necessary supporting documents. Additionally, the reply should be drafted with the assistance of legal experts, such as lawyers or trademark agents, who can refer to decided cases, recent rulings on similar matters, and judgments by tribunals, courts, or international references.

Extension of Time to File Objection Reply

If the reply to the Examination Report is not filed within 30 days, the application will be declared abandoned unless a response is submitted. The applicant can request the Registrar to extend the 30-day period by applying for TM-M (with a fee of ₹900), which must be done electronically through the trademark agent, providing a valid reason for the delay. However, the best practice is to file the reply within the 30-day window to avoid unnecessary delays and protect the trademark from being abandoned. If the reply is to be filed through a different trademark agent, a new Power of Attorney is required. After filing, the applicant must draft a response or objection to address the matter.

Consequences of non-filing an Objection

Trademark objection is a crucial step in the Trademark Registration Process. If the reply to the examination report is not filed within 30 days of receiving the notice, or by the extended time, the trademark application will be marked as Abandoned or Neglected by the Trademark Registry.

In case the application has been marked as abandoned then this application will be of no use, the applicant has to file a fresh application for the Trademark.

Who can use TM & ® Symbol?

TM is used when registration is in process. ® is used when Trademark Registration is completed done.

FAQ’s

Trademark Objection is a formal objection raised by the Examiner of the Trademark Registry against a trademark application. It occurs after the application is filed but before the registration process is completed. The objection is typically based on various grounds, such as similarity to existing trademarks, lack of distinctiveness, or issues with the trademark’s description or classification.

The applicant is required to respond to the objection by filing a reply within a specified time frame (usually 30 days), addressing the concerns raised by the examiner. If the objection is not resolved, the application can be abandoned, and the trademark may not be registered.

The timeline to respond to a trademark objection is 30 days from the date of receiving the Examination Report from the Trademark Registry.

If the reply is not filed within this period, the application will be considered abandoned. However, if the applicant is unable to respond within 30 days, they can apply for an extension of time by submitting a TM-M application (with a fee of ₹900) through a Trademark Agent with a valid reason for the delay. The extension is generally granted for an additional 30 days.

It is essential to file the reply within the prescribed time limit to avoid the risk of the application being abandoned.

You will be notified of a trademark objection by the Trademark Registry through an Examination Report. The report is typically sent via email or postal mail to the applicant or their Trademark Agent.

Here’s how to check if you have received an objection:

  1. Email Notification: If you have provided an email address while filing the trademark application, the Trademark Registry will send the Examination Report to that email.
  2. Trademark Registry Portal: You can also log in to the Trademark Registry’s official portal (https://ipindiaonline.gov.in) and check the status of your application. If an objection has been raised, it will be reflected under the status of your application.
  3. Physical Mail: In some cases, you may also receive a physical letter from the Trademark Registry, informing you of the objection.

The objection will mention the specific reasons for the objection and the actions you need to take to resolve the issue.

After you submit the reply to the trademark objection, the following stages occur:

  1. Examination of the Reply: The Trademark Examiner will review the response you provided to the objection. They will assess whether the issues raised in the objection have been satisfactorily addressed.
  2. Acceptance or Further Objection:
    • If the reply is found satisfactory, the examiner may accept the application and proceed with the next step toward registration.
    • If the examiner is not satisfied with your reply, another objection may be raised, and the final decision may be delayed.
  3. Hearing (If Required):
    • If the examiner’s decision is still unfavorable or if there are disagreements, the case may be forwarded for a hearing before the Registrar. You or your trademark agent will need to present arguments supporting your application at the hearing.
  4. Publication in the Trademark Journal:
    • If the examiner accepts the application (either after reviewing the reply or following the hearing), the trademark will be published in the Trademark Journal for a period of 4 months.
    • During this period, any third party can file an opposition to your trademark registration.
  5. Issuance of Registration:
    • If no opposition is filed, or if the opposition is successfully overcome, the Trademark Office will proceed with registration of your trademark and issue the Certificate of Registration.

The entire process can take a few months, depending on the circumstances and whether there are objections or oppositions to the trademark.

Q5. What if the examiner is not satisfied with the reply?

If the Trademark Examiner is not satisfied with the reply you have submitted, the following outcomes are possible:

  1. Further Objection Raised: The examiner may issue a fresh objection pointing out why the reply is insufficient or does not address the issues raised in the initial examination report. This could include technicalities, lack of supporting evidence, or non-compliance with trademark registration criteria.
  2. Show Cause Hearing: If the objection persists, the examiner may refer the matter for a hearing. In this case, you (or your trademark agent) will be required to present arguments and evidence to convince the examiner that your trademark should be registered. A hearing notice will be sent, and you will be given an opportunity to defend your case.
  3. Abandonment of Application: If no satisfactory reply is submitted within the time frame, or if the objection is not resolved satisfactorily, the trademark application may be abandoned. However, you can request an extension by filing Form TM-M within the prescribed period to avoid abandonment.
  4. Rectification or Refiling: In some cases, the examiner may suggest modifications to your application, such as changes in the description of goods/services or the trademark itself. If this is the case, you may need to make those changes and resubmit the application.

If the objection remains unresolved after the hearing, it is important to appeal the decision or take necessary actions to protect the trademark application.

If your trademark status is showing as “objected,” it means that the Trademark Examiner has raised concerns or issues regarding your trademark application. Here’s what you can do:

  1. Review the Examination Report: The first step is to carefully read the Examination Report issued by the Trademark Registrar. It will specify the reasons for the objection, such as similarity to an existing trademark, lack of distinctiveness, incorrect classification of goods/services, or other legal issues.
  2. Prepare a Reply: You need to prepare a detailed reply addressing the objections raised by the examiner. This reply must be filed within 30 days from the date of the examination report. Ensure that you:
    • Provide a justification for why the objections are incorrect or can be overcome.
    • Submit any supporting documents or evidence that may help prove the validity of your trademark.
    • Make necessary modifications to the trademark, description, or classification if required.
  3. File the Reply Online: The reply should be submitted electronically through the Trademark Portal. Ensure the reply is drafted by an experienced trademark lawyer or trademark agent to ensure that all legal and procedural requirements are met.
  4. Request Extension if Necessary: If you cannot file the reply within the stipulated 30 days, you can apply for an extension of time by filing Form TM-M with a valid reason for the delay. This extension is usually granted for an additional 30 days.
  5. Await Response from the Registrar: Once the reply is filed, the examiner will review your response. If the objections are resolved satisfactorily, your application will proceed further for registration. If not, you may receive a further objection or be asked to attend a hearing.
  6. Attend a Hearing: If the examiner is still not satisfied with your reply, a hearing may be scheduled. You will need to attend this hearing, either in person or through a trademark agent, and present arguments or evidence to defend your trademark.
  7. Seek Professional Help: If you’re unsure about the process or how to address the objection, it is advisable to consult with a trademark lawyer or trademark agent to guide you through the procedure. They can help you craft a strong response and represent your interests effectively.

Trademark experts can prepare a draft & file within 3 working days of objection received.

As long as your status is showing “Objected”, you can still file a reply.

After filling a trademark reply it take 7-8 months for the examiner to check the reply filled. Status will be changed afterwards when it is analyzed by the examiner.

No, physical presence is not required. Legaltax.in is an online platform where your application is completely drafted. Legaltax.in has a team of qualified lawyers and Chartered Accountants who will handle your work with care. All you need are the necessary documents, and your work will be completed, no matter where you’re located.

Yes, you still can. Trademark Registry does not ban the usage of the TM sign even it issues the Trademark objection.

No worries, you can still file the reply as long as the status shows “Awaiting Reply to Examination Report.” However, if you fail to submit the reply even after that, your trademark objection status will be marked as “Abandoned.”