A Trademark objection is a legal challenge raised by the Registrar of Trademarks against a proposed trademark application. Objection is made when the Registrar feels that the proposed trademark does not comply with the standards of the Trademark Act, 1999. The Act notice two categories of grounds for Trademark objection; outright and relative. The entire grounds relate to the trademark itself, such that it lacks distinctiveness or contains objectionable or prohibited material. Relative grounds, on the other hand, concern how similar the proposed trademark is to a trademark that has already been registered. When a trademark is objected to, the applicant has to file a counter-statement with the Registrar of Trademarks in response to the notice of objection. To prevent further legal problems, it is important to respond to a trademark complaint quickly and effectively.
Relevant grounds for Trademark objection are cases where a proposed trademark is similar to an already registered trademark and is likely to cause consumer confusion under section 11 of the Trademark Act, 1999. In other words, the Trademark objection is brought because a prior trademark already exists. Identical or similar goods or services may cover the earlier trademark, and may be registered or awaiting registration.
It is important to remember that rejection of an Trademark objection does not always result from the presence of a prior trademark. The strength of previous trademarks, the degree of similarity between the marks, and the nature of the goods or services covered are some of the variables the registrar will take into consideration. In order to rule out any potential objections, it is important to conduct a thorough trademark search before submitting a trademark application.
Section 11 of the Trade Marks Act, 1999 specifies the relevant grounds for objection. These objectionable grounds include:
- Similarity to an existing trademark: The proposed trademark cannot be registered if it is similar or confusingly similar to an existing trademark in relation to similar products or services.
- Similarity to a well-known trademark: Registration can be refused even if the proposed trademark is not identical or confusingly similar to another well-known trademark.
- Confusingly similar to the previously pending application: If the proposed trademark is confusingly similar to a trademark which is the subject matter of an earlier pending application, registration may be refused.
- Similarity to an established trademark: Even if the proposed trademark is not similar to a trademark that already has a solid reputation in India, registration can be refused.
After examining the trademark application, the trademark office generates a report of the applicant called the Trademark Examination Report. The report details the ongoing status of the application and lists any concerns or issues that must be resolved before the application can proceed for registration.
Examination report is an important step in the trademark registration online process as it enables the applicant to detect any possible problems or objections that may arise. Maybe there is a chance to get Trademark objections mentioned in the reports based on fundamental reasons (such as a trademark which is already in use or having objectionable components) or grounds which are relative (such as a trademark being too similar to an application whose status is already pending). But There is a chance for the applicant to reply to any concerns or objections mentioned by the trademark office after receiving the examination report by the trademark office after receiving the examination report and within the specified time period. The trademark application may only be accepted if a response is made in a given period of time to the report of examination.
The office of Trademark then verifies a trademark application that has been filed. If any concerns are included in it, a Trademark objection notice mentioning section 11 of the Trademarks Act, 1999, will be sent to the applicant who is filing that Trademark. Trademark objection reply process contains The following step:
- Review the trademark objection notice: it’s important to thoroughly understand the notification and comprehend the trademark office’s objections.
- Generate a Search: to assess the chances of the objection and to bolster the response, you have to generate a Search for Trademarks which is comparable.
- Draft the response: In The next step the applicant has to prepare a draft that includes all the complaints and is backed up by legal reasoning and facts
- Response Submitting: then you have to submit a response to the registrar of Trademark within a given time period, Together with the needed supporting documentations.
- Attend the Hearing : there is a chance to get a hearing to address the objection further if the Registrar of trademark is not satisfied with the counter – statement.
You should have to prepare a Trademark objection reply to submit to the Trademark registrar if you get a Trademark objection notice. Here are some essential papers which should be included in your response:
Also, Read-How to File Trademark Objection in 2023
- Reply to examination report : the reason for which you got an objection should be mentioned in this written answer to the Trademark objection notice. A thorough justification of how and why your trademark is different from any existing registered or pending trademarks.
- Evidence of Prior Use: If you have used your trademark before the application date, you must provide proof of that use. Examples are invoices, product labels, promotional materials, and any other paperwork that can substantiate your claim of first use.
- Proof of distinctiveness: You must show that your trademark is distinctive and has added value in the eyes of consumers. This may include documentation of sales data, advertising costs and media coverage.
- Search Report: Before submitting a counter-statement, it is important to search for comparable trademarks. You can use a discovery report to locate any potential conflicts and then address them in your counter-statement.
- Power of Attorney: If you are engaged with a trademark lawyer, you will need to give them a power of attorney to represent you.
It is important to note that the type of objection and the jurisdiction in which you are filing, Various documents may be required. With a view to ensuring that your response to the Trademark objection is complete and sound, it is always advisable to seek legal advice from a trademark lawyer.
The reply, along with supporting documentation, must be sent within 30 days from the date of receipt of the examination report. Also, the response to the trademark examination report should be written with legal standing, including judgments of cases with similar issues as well as tribunal, courts and global authorities.