Trademark Objection Online in India

What is Trademark Objection?

It is considered to be the most prime or the main stage of registering any trademark. It is the 3rd stage in the process i.e. "EXAMINATION". Trademark objection is always done by the examiner, an individual, a proprietor, Registrar, or any third party but examination is solely done by the examiner on certain grounds according to the findings or discovery made during examining.

Trademark objection doesn't mean that an application is rejected, it means that there is an error or the application has failed to follow the said guidelines. As trademark is crucial, it is to be handled with an attorney or lawyer who are expert in dealing with this by drafting the matter.

What is Trademark?

A trademark is a projection of a name, word, label, device or numeric characters utilized by a business to differentiate its goods and services from other similar goods and services. A trademark works as an exclusive identity of the goods and/or services that a person is offering/selling from other such goods/services. A trademark once registered is an intangible asset or intellectual property for a business which is used to safeguard the company's investment in the brand or symbol.

Besides this, trademarks that are deceptive, generic, offensive, similar, contains exclusively protected emblems, etc. cannot be registered either.

What are the types of objection raised under this?

• Same name or the proposed Trademark already exists like "luxuary" & "luxuary" — falls under Section 11(1) of the Trademarks Act
• Single word whether prefix or suffix e.g. "Newsnow" or "Nownews" — Trademark name should be distinctive
• Sometimes, trademark logo is not clear or its dimension is not according to the guidelines
• Filing of Incorrect Trademark Form
• Failure in filing Trademark Form TM-48 i.e. Power of Attorney
• Trademark filing under the Wrong Trademark Class
• Vague specifications of Goods and Services
• Affidavit is not attached
• Supporting documents of the applicant are not there
• Objection raised if the name is common or some form of geographical name or location is used — falls under Section 9 of Trademark Acts

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.

1. Need to know the Objection Ground Carefully: Understand and analyze the examination report to determine the reason for the objection raised properly.
2. Prepare or draft a Reply: Drafting the trademark reply requires special skill and should be given to lawyers or attorneys. Must be done within 1 month from the date of receipt of the notice of objection. Failure to file within 1 month might change the status to Abandoned.
3. Sometimes Reply is done via TM-M which includes government fees due to deletion/addition of a word or incorrect goods/services.
4. Timelines for reply: Response must be filed within 30 days of the examination report with supporting documents. Otherwise it will be considered abandoned.
5. If the Reply is accepted: Application will be processed further for registration and advertisement in the Trademark Journal.
6. If it is not accepted: The registry will mark the matter for hearing and date/time will be notified to the Trademark Agent.
7. File TM Objection Reply: Once finalized, file the reply online as replies filed online are updated quickly.

Difference between Objection and Opposition

• Objection is raised by the government examiner at an initial stage after filing the application.
• Trademark Opposition can be filed by any person who has an issue with the trademark after it has been advertised in the Trademark Journal.

Trademark Opposition in India

Section 21 of the Trademarks Act, 1999 states that "any person" can file the notice of opposition including any natural or legal person such as a corporation, partnership etc.

The following individuals generally raise a trademark opposition:

• Already Registered: The owner of a previous trademark application or registration of a similar product.
• Prior User: A person who has used the same or similar trademark before the customer registered their trademark.

Procedure for Trademark Opposition in India

1. Notice of Opposition — Any person can file an opposition within 4 months from the date of first publication in the trademark journal.
2. Counter-Statement — The applicant can submit a counter-declaration within two months (non-renewable) after receiving the TM-O form.
3. Evidence supporting the opposition — The opponent must provide evidence within 2 months (renewable by one month) of receiving the copy of the counter claim.
4. Evidence supporting the application — The applicant has 2 months to produce evidence in their favor.
5. Response to Evidence — The opponent is given an extra month (extendable for 1 month) to provide evidence in response.
6. Hearing — Once the Evidence phase is complete, the Registrar will notify the parties of the hearing date.
7. Decision — The Registrar decides whether the opposition is successful and whether the trademark is registered.

What are the benefits of Trademark Objection?

• Stop any similar or identical Trademark that could weaken the reputation of an already registered Trademark
• The right to exclusively use it in respect of goods and services
• Legal protection: Once registered, an infringement can be sued by the owner
• Value in the market: A trademark standardizes the product and services in the market
• Right to use the ® symbol once registered
• Protect the trademark from getting abandoned or rejected

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 must be filed within 30 days (1 month) of the examination report with supporting documents.

Extension of Time

The applicant can request the registrar to extend the 30-day time limit by applying TM-M (fees ₹900) electronically through the trademark agent with a valid reason for delay.

Consequences of non-filing

If the reply is not filed within 30 days or by the extended time, the Trademark application shall be marked as Abandoned/Neglected. The applicant will have to file a fresh application.

Who can use TM & ® Symbol?

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

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