Trademark Objection

A trademark objection is an official notice from the trademark examiner flagging an application for not meeting legal requirements or for conflicting with existing trademarks. It is not a rejection but a request for the applicant to provide clarification or resolve the identified issues.

What It Is: A trademark objection is a stage in the trademark registration process where the trademark office expresses concerns about a particular application.

• It’s not a rejection, but rather a request for the applicant to resolve the issues raised.
• The objection is typically communicated through an examination report.

Why It Happens: Objections arise for several reasons:

• Lack of Distinctiveness: The trademark might be too generic, descriptive, or similar to common terms, making it difficult to distinguish from other marks.
• Conflict with Existing Trademarks: The proposed mark may be too similar to a previously registered or pending trademark, potentially causing consumer confusion.
• Prohibited Elements: The trademark might contain forbidden words, symbols, or designs.
• Other Issues: The trademark could be misleading, deceptive, or violate other trademark laws.

What It Means for the Applicant: An objection presents an opportunity for the applicant to address the concerns:

• Opportunity to Respond: The applicant has a specific timeframe (e.g., 30 days in India) to file a reply addressing the objections.
• Requires Careful Response: The response should be detailed and well-reasoned, providing justifications, evidence, and legal arguments to overcome the objections.
• Potential for Further Action: Depending on the response, the trademark office may conduct a hearing or further review the application.

While both “trademark objection” and “trademark opposition” are hurdles in the trademark registration process, they occur at different stages, are initiated by different parties, and have distinct purposes.

Here’s a table outlining the key differences:

A trademark application can face objections based on absolute grounds (Section 9), relative grounds (Section 11), and procedural issues.

Absolute grounds relate to inherent flaws in the mark itself, while relative grounds concern conflicts with existing trademarks. Procedural issues involve errors in the application process.

1. Absolute Grounds for Refusal (Section 9)

These objections arise from inherent defects in the trademark itself, making it unsuitable for registration:

• Lack of Distinctiveness: The mark is too common, descriptive, or generic for the goods/services it represents, making it incapable of distinguishing one trader’s goods/services from another’s.
• Deceptive Marks: The mark is likely to mislead the public about the nature, quality, or origin of the goods/services.
• Offensive or Immoral Marks: The mark contains scandalous or obscene matter, or elements that are contrary to public order or morality.
• Other Statutory Restrictions: The mark violates other specific laws, such as the Emblems and Names (Prevention of Improper Use) Act, 1950.

2. Relative Grounds for Refusal (Section 11)

These objections stem from conflicts with existing trademarks, aiming to prevent consumer confusion:

• Similarity to Existing Trademarks: The proposed mark is identical or deceptively similar to a registered trademark or a prior filed application for similar goods/services.
• Likelihood of Confusion: The mark, due to its similarity to an existing mark, is likely to confuse the public regarding the source or association of the goods/services.
• Taking Advantage of Well-Known Marks: The mark attempts to exploit the reputation or goodwill of a well-known trademark, even if the goods/services are dissimilar.

3. Procedural Objections

These objections relate to errors or omissions in the trademark application process itself:

• Incorrect Applicant Name or Address: Errors in the applicant’s name, address, or contact information as provided in the application form.
• Vague or Incorrect Specification of Goods/Services: The description of the goods/services for which the trademark is sought is unclear, overly broad, or incorrect, making it difficult to ascertain the scope of protection.
• Incorrect Trademark Form: The application was not filed on the proper form designated for trademark registration.
• Missing Form TM-48 (Power of Attorney): If an agent or attorney is representing the applicant, a valid power of attorney (Form TM-48) may be required, but is missing from the submission.
• Translation and Transliteration Issues: If the trademark includes non-English elements (e.g., words in a foreign language or non-Roman script), proper translation and transliteration may be required, but are absent or inaccurate.

Here are the documents you need to submit while replying to a trademark objection:

• Authorization Form TM-48.
• Trademark examination report or application number.
• ID proof like an Aadhaar card or a passport.
• Address proof, such as a utility bill or bank statement.
• Invoices and purchase bills related to the trademark.
• An affidavit showing how and since when the trademark is being used.
• Advertisements in newspapers, magazines, or online platforms.
• Proof that the trademark is available online, like website links or listings.
• Evidence that the trademark is used for business, such as product packaging or labels.
• Business cards and letterheads with the trademark.
• Government certificates like MSME or FSSAI registration.
• Screenshots of social media pages or copies of ads.
• Written reply to the examination report.

If your trademark faces an objection, prompt and effective action is essential. Here’s how to proceed:

1. Review the Objection Notice Carefully

Thoroughly understand the specific reasons outlined in the Trademark Office’s objection notice. These grounds can range from similarities with existing trademarks to concerns about your trademark’s distinctiveness or its potential to mislead consumers.

2. Prepare a Response

Craft a detailed response directly addressing each objection. This response should include arguments and evidence to bolster your claim, such as proof of your trademark’s distinctiveness, evidence of prior use, consumer testimonials, or any other relevant information that strengthens your case.

3. Consult with a Trademark Attorney

Given the intricacies of trademark objection responses, professional legal advice is highly recommended. A trademark attorney can help you comprehend the subtleties of the objection, formulate a compelling response, and guide you through the subsequent stages of the process.

4. File the Response within the Deadline

Ensure your response is submitted to the Trademark Office within the designated timeframe, which is typically one month from the date of the objection notice in many jurisdictions. Meeting this deadline is critical; missing it can lead to the abandonment of your trademark application.

5. Monitor the Application Status

After submitting your response, diligently track your application’s status via the Trademark Office’s online portal or through your attorney. The process may involve further communication or additional requirements from the Trademark Office.

6. Be Prepared for a Hearing

In certain instances, the Trademark Office might schedule a hearing to discuss the objections and your response in detail. Be ready to present your case, potentially with the assistance of your trademark attorney, to articulate why your trademark should be registered despite the objections.

A good trademark objection reply should answer each objection, provide supporting documents, include legal points, and use a polite and professional tone.

1. Mention the Objection Notice Clearly

• Start by writing your trademark application number and the date of the objection notice.
• Mention the reasons given by the examiner for objecting to your trademark.

2. Reply to Each Objection

• Understand each objection properly. It could be because your mark is too common, too similar to another mark, or filed under the wrong class.
• Answer each point clearly, giving proper reasons and explanations.
• Provide supporting documents, like proof of use, invoices, ads, or any related materials.
• Use legal points or case references, if possible, to show your mark is valid and can be registered.
• Compare with existing marks (if similarity is the issue), and highlight the differences to prove your mark is unique.
• Make changes to the application, if needed, to solve the issue.

3. Attach Supporting Documents

• Proof of earlier use: Include invoices, sales receipts, or ads that show you’ve used the trademark before the other party.
• User affidavit: Submit a signed statement saying how and since when you’ve been using the trademark.
• Other documents: Attach things like business cards, letterheads, or certificates like MSME or FSSAI  if relevant.

4. Include Legal Support

• Mention the sections of the trademark law that support your arguments.
• Add examples of past cases where similar marks were allowed, if available.

5. Use a Formal and Clear Tone

• Keep your reply polite and professional.
• Use simple and direct language that’s easy to understand and not too complicated.

Below are the steps to check trademark status in India –

Step 1: Visit the IP India website: Go to ipindia.gov.in/

Step 2: On the subsequent page, select ‘National/IRDI number’. The following page will then prompt you to input the trademark application number and the captcha.

Step 3: Enter your trademark application number, complete the captcha, and click ‘View’.”

Step 4: You will now see your trademark application details and current status. This includes applicant details such as the application number, class, date, location, trademark name, company description, product/brand description, and more.

Yes, you can generally continue to use your trademark even if it’s in an objected status. However, you won’t have the same legal protections as a registered trademark. An objection means the trademark examiner has raised issues with your application, and you’ll need to address them to proceed with registration.

• Objection doesn’t mean denial: An objection is a query, not a final rejection.
• You can still use it: You can continue using the mark in commerce, but you won’t have the legal protections of a registered trademark until the objection is resolved.
• Addressing the objection is crucial: It is crucial to file a formal reply to the examiner’s objections within the specified timeframe (usually 30 days) to prevent your application from being abandoned.
• Possible reasons for objection: Objections can arise from various factors, such as similarity to existing trademarks, the descriptive or misleading nature of the mark, or issues related to public policy.
• Consequences of not addressing objections: Failure to respond to objections or resolve them adequately can lead to the rejection of your trademark application.

After filing a reply to a trademark objection, the Trademark Registry will review the response and either accept the application, raise further objections, or schedule a hearing. If the reply is deemed satisfactory, the trademark will be published in the Trademarks Journal, allowing for public opposition. If the reply is not sufficient, the application may be rejected, or a show-cause notice may be issued.

• Review of Reply: The examining officer reviews your response.
• Acceptance or Further Action: If satisfied, the officer accepts the application. If not, they may schedule a hearing.
• Publication and Opposition: Once accepted, the mark is published in the Trademarks Journal for 4 months, allowing third parties to oppose it.
• Show Cause Notice: If the officer is not satisfied with the reply, they may issue a “show cause notice,” requiring the applicant to explain why their trademark should be registered.
• Hearing: If a show-cause notice is issued, a hearing may be scheduled where the applicant can present their case to the Trademark Registry.
• Final Decision: After the opposition period (and any related proceedings), the Registry makes a final decision.
• Appeal: If the application is rejected, you can appeal the decision to the Intellectual Property Appellate Board.

When your trademark application in India faces an objection, you’ll need to file a reply to address the concerns raised by the Trademark Office. The cost for this typically comprises professional fees and sometimes a small administrative fee for affidavits. There are generally no direct government fees for filing a reply to a trademark objection itself.

Here’s the table from the image:

Preventing trademark objections is essential in trademark registration to ensure your brand identity is legally protected without facing legal hurdles.

Step 1: Conduct a Thorough Trademark Search

Before you apply, check if your trademark or something very similar is already taken. Use the Indian Trademark Registry’s online search tool, which offers free trademark search options. If you find anything too close, rethink your choice. Even abandoned marks can cause trouble, so it’s best to avoid them too.

Step 2: Use a Distinct Mark

The more unique your trademark is, the better. A distinct name not only avoids legal issues but also helps your brand stand out. Try creating a new word or combining terms in a creative way to make your brand memorable and legally safe.

Step 3: Avoid Deceptively Similar Marks

Your mark should not look or sound like any existing trademark. If it does, it could confuse consumers, and the trademark office will likely reject it.

Step 4: Avoid Well-Known Marks

Avoid names that resemble famous or widely recognized brands, even in unrelated industries. These are strongly protected, and your application will almost certainly be rejected if you seem to be piggybacking on their reputation.

Step 5:  Do Not Use Common Words

Using generic terms like “Tech Solutions” or “Best Education” won’t work. These words are too broad and can’t be registered. Your trademark should be original enough to set you apart from everyone else in the same field.

Step 6: Coin a New Word

Inventing your own words is a great way to avoid objections. Since it’s completely new, there’s little to no chance someone else has already registered it. Plus, it builds a strong and unique brand identity.

Step 7:  Do Not Use Names of Geographical Locations

Don’t include names of countries, cities, or regions in your trademark. For example, “Bangalore Sweets” might be rejected because place names can’t usually be owned by one business. They must stay open for everyone to use.

Step 8: Draft Applications Without Any Errors

Make sure all the information in your application—like the business name, trademark details, and class of goods/services is 100% accurate. Typos, incorrect info, or missing details can lead to delays or objections.

Step 9: Conduct Additional Searches Specific to the Field of Operations

If your business is digital (like an app or website), search app stores and the internet in addition to the official trademark database. Someone might be using a similar name informally, which could still lead to conflicts.

Step 10: Avoid Any Offensive Marks

Your trademark should be respectful and appropriate for all audiences. Avoid words or images that could offend religious, cultural, or community sentiments. Offensive marks are automatically rejected.