Overview of Trademark Objection

Trademark objections are very common and most of the application faces these objections. However, trademark objections are not fair always. Therefore full care should be taken while filing the trademark application because once objection is raised by examiner then normally it take lot of time to process further.

Once a trademark application is filed, the Trade Marks Registrar will process the same application and issue an Examination Report which may allow to be advertised before registration or examiner can raise an objection for applied mark.

Types of Trademark Objection

• Use of Incorrect Trademark Form
• Incorrect Trademark Applicant Name
• Failure to File Trademark Form TM-48
• Wrong Classification of Trademark Class
• Incorrect Address on Trademark Application
• Vague & wide Specification of Goods or Services
• Existence of an Identical/similar Marks
• Lacking of Distinctive Character
• Usage of Deceptive and Offensive Terms

Main Grounds of Trademark Obection

There are mainly two grounds under which the trademarks are objected. They are:

• 1. Absolute Grounds:
  a. The trademark does not possess any distinctive character.
  b. The trademark indicates the quality of the product it represents. c. The trademark is offensive to specific communities .
• 2. Relative Grounds:
  a. The trademark can cause confusion among public because of similar trademark is already exist on the records in respect of similar goods or services.
  b. The applicant may reply to examination report that trademarks cited as conflicting marks are different from the applicant's trademark, along with supporting evidence or applicant may present the NOC from owner of marks cited as conflicting in the examination report.

Document Required for Trademark Objection

For the purpose of reply to Trademark Objection, following documents are required:

• Authorization –TM-48
• Examination Report of Trademark/Application Number
• ID Proof
• Address Proof
• Affidavit of usage
• Supporting evidence of Trademark in commercial use.

Process of Trademark Objection Reply

When an objection is raised, the status is marked as “Objected” by registry. The following steps are involve to file a response to the trademark objection:

• Step 1: Analyzing Trademark Objection
  The first step is to understand the objection raised by the examiner and reason for such objection and identify under which section it has been objected.
• Step 2: Drafting of Trademark Objection reply
  The draft a trademark reply which should include the following:
  • The reply to the Trademark objection must contain reasons, facts, with supporting rule of law and judgments supporting the case and evidence and other supporting documents that validates the response.
  • An affidavit stating the usage of the trademark in the applicant’s website and social media network, advertisement ,availability of trademarked products on e-commerce sites, etc. along with the documentary proof for the same.
  • The reply to the objected mark will be saved from being abandoned or rejected, and be considered for further processing.
• Step 3: Trademark Hearing
  In case the response is accepted and considered, objections can be waived on the basis of the applicant's response and then the registry will allow for the trademark application to be advertised before registration in the Trademark Journal or registry may require additional clarifications and there would be a trademark show cause hearing schedule and the same will be notified with a notice.
• Step 4: Publication in Trademark Journal
  • After appearing in the hearing ,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 case there is negative outcome at the hearing, the Refusal Order will be passed by registry along with stating the reason for such refusal.
  • But the applicant still will have the option to file an appeal for the order passed by registry with filing a review petition within 30 days from the date of the Refusal Order with facts and grounds on which the order must be reviewed.
• Step 5: Registration
  • An accepted application is published in trademark journal for a period of 4 months .If there is no third-party oppositions who has issue with the trademark filed within that period then trademark will be proceed towards registration and the Registration Certification is issued by registry.
  • In case opposition is filed by any person who has issue with the applied trademark then opposition proceedings will take place as per the prescribed rules of the law.

Difference between Objection & Opposition

The main difference between Trademark Objection and Opposition is that Objection is raised by examiner at a preliminary stage of the trademark registration after filing the application. Whereas trademark opposition is raised by any person who has an issue with trademark filed after it has been advertised in the Trademarks Journal for the period of 4 months.