What is Trademark Objection Overview
A trademark is a logo, symbol, tagline, or a combination of these that represents a brand’s identity. Oftentimes, during the trademark registration process, the Trademark Registrar raises objections on the intended trademark if it violates rules and laws of trademark registration. It could be due to several reasons like similarity with an existing trademark, offensive to a particular religion, absence of a distinct design, etc. In the event of a trademark objection, a comprehensive reply needs to be filed within a month, from the date of issuance of the objection.
Trademark is one of the rights granted to protect intellectual property in India. Rights covered under Trademark Act 1999 include protection, registration, and objection of a trademark with government authority.
Process for Trademark Objection
When an objection is raised, the status of the trademark in the Indian Trademark Registry will be marked as “Objected”. The following are the steps to file a response in the event of a trademark objection:
01
Analyzing Trademark Objection
The first step involves analyzing and studying the objection carefully, as any ambiguity in understanding can lead to incorrect filing of Trademark Objection Response.
02
Drafting Of Trademark Objection Response
The next step is to draft a trademark reply which should include the following:
- A proper answer to the objection raised with supporting rule of law and precedents and judgments supporting the case
- The differences between the conflicting mark and the mark of the applicant.
- Other supporting documents and evidence that validates the response.
- An affidavit stating the usage of the trademark in the applicant’s website and social media channels; advertisement in the media; publicity material; availability of trademarked products on e-commerce sites, etc. along with the documentary proof for the same
- The response draft is then filed online on the Trademark e-filing portal.
03
Publication In The Trademark Journal
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 the event of a negative outcome, the Refusal Order will be passed, explaining the reason for the refusal. The applicant still would have the option to appeal the order by filing a review petition within 30 days from the date of the Refusal Order mentioning the grounds on which the order must be reviewed.
04
Registration
Once your trademark is published in the Trademark Journal, it will be open to scrutiny for a period of four months. If no third-party oppositions are filed within that period the mark will then proceed towards registration, and the Registration Certification is issued. If an objection is filed the opposition proceedings will take place as per the prescribed rules of the law.
Documents Required For Trademark Objection
- Authorization letter
- Affidavit of usage
- Examination report
- Trademark hearing notice
- Documentary proof of Trademark in commercial use
- The duly appointed applicant or the attorney has to appear before the authorities, on the scheduled date
Checklist /Minimum requirement for Trademark Objection
The Trademark Examiner scrutinizes the trademark application to make sure the application isn’t in conflict with any trademark rules. A trademark application can face objection for any of the following reasons:
Filing of Incorrect Trademark Form
If the application is not filed using the correct form an objection would be raised by the examiner. For example, it is Form TM-4 for registration of collective marks for goods and services in any one class. Form TM-51 for registration of a trademark under different classes of goods and services.
Incorrect Trademark Applicant Name
Trademark has to be filed on the true name of the applicant and double-checked for the right spellings.
Usage of Deceptive and Offensive Terms:
Trademark names that include deceptive terms or that which try to deceive or mislead customers with false descriptions of products or services will be rejected. For instance, an entity branded “Vanilla chocolates” that sells chocolate flavours may be deemed deceptive. At the same time, applications registering for trademarks containing offensive terms will be rejected.
Insufficient Information on Goods/Services:
When the trademark application fails to mention in brief the products and services of the business, it is highly likely that the Trademark Examiner may reject the application due to the vague information.
Existence of an Identical Mark:
The intended trademark must not be similar to any mark that already exists in the industry. The Trademark Examiner can raise objections under the Trademarks Act stating that it might create confusion among the masses.
FAQs On Trademark Objection
The objection on trademark is communicated to you via examination report which is prepared by the examiner of the trademark applications. you can download the report from the IPR website
You can get the examination report of the trademark objection on the website of IPI India.
MeraProfit drafts and file a reply within the 3 working days of objection received subject to the availability of the documents
As far as the status is showing objected you can be able to file the reply for your trademark objection mentioned in the examination report
After filing the trademark objection reply, it can take up to 7-8 months for the examiner to check the reply filed. The status will be changed only after the examiner's analysis & check up
No, it is not, But Procedure to submit objection reply requires legal knowledge and good drafting skills also it is necessary to present your response to each objection raised by the examiner promptly. So it is advisable to hire a professional attorney. MeraProfit have experience and better legal understanding & we can get the job done in 3-4 working days while you sit back at your place and relax
No there isn't any government fee to file the examination reply
The main difference between trademark objection & trademark opposition is that the objection arises at the preliminary stage that is at the time of filing of a trademark application while the trademark opposition is filed at later stage when the trademark is advertised in trademark journal.
Yes MeraProfit is an online platform serving all over India no matters wherever you are doing business all you need is internet connection on your mobile or desktop and we are ready to get your job done
No, You don't need to be physically present for the process, MeraProfit is an online catering platform all you need is an internet connection in your phone/computer and the required documents with you and we can get the job done no matters even if you are present at the remotest location of India
Upon filing the Trademark Application, the next step is of trademark examination by the Ministry of Trade & Commerce and the examination report is issued by the time to time by the Ministry. After issuing the examination report, if any resemblance clashed with existing trademark then application status is shown as- 'Objected' with the alert 'Awaiting Reply to Examination Report'. You can download the report from the IPR website
The applicant must file legal reply drafted by professional within 30 days in order to rebuttal the objections raised and clarifications required by the Trademark Registry. If you didn't file a reply within time, your trademark use rights shall be revoked.
Yes, you can. The Trademark Registry does not intend to bar the usage of the TM sign if it issues a trademark Objection or Examination Report. It only requires a suitable legal reply w.r.t objection raised.
The reply to the Trademark exam report should be submitted within 30 days from the date of examination report raised. If you didn't file the reply within time, your trademark use rights shall be revoked.
After the filing reply to the Trademark Objection with the Registry, it will automatically be displayed on the application status in IPR website. Besides, the alert 'Pending for Reply' will be removed from the status.
You can submit the reply to the trademark objection report until the alert 'Awaiting Reply to Examination Report' is displayed. If you fail to submit reply much after the deadline, your trademark objection status will be marked as 'Abandoned'.
After the reply filed for the trademark exam report is reviewed by the examiner, the application can be passed for the further stage, where it can be- Marked For Examination: On being satisfied, the examiner will pass the application and publish in the trademark journal for the next 3 months. Ready for Show Cause Notice: If further clarification is still needed, a show cause notice will be issued.
A show cause notice will be issued in case trademark Objection needs further clarification. However, the chances of getting a show cause notice are very rare. It is issued only if the examiner is not satisfied with the reply filed.
The application is published in the trademark journal for next 3 months, where it can be objected by a third party. If no opposition has been made by the third party, trademark Registration Certificate will be issued by the Trademark Registry.
