Trademarks Objection in India

What is trademark objection?

Trademark objection refers to the queries that are raised by the trademark examiner in the examination report during the process of registering the trademark. The term “objected’ implies that a particular trademark application has been examined, there are some flaws associated with the trademark in the examination. That means the trademark doesn’t fulfill all the conditions for the trademark registration.

How to proceed if your Trademark file has been objected?

If the examiner objects a trademark file then, the examination report citing the objections can be viewed in the Trade Mark Registry website. A written response statement needs to be filed by the applicant within 30 days of receiving the examination report from the department or if not received when it comes to your knowledge that reports got issued online. Failing to overcome all the objections raised by the examiner within the stipulated time of 30 days will lead to the abandonment of the trademark. The abandonment puts you into the position in which you were before filing the application – meaning, you’ve lost your money spent on the filing.

What are the minimum requirements for Trademark registration?

• The Application of trademark signed by the applicant.
• A detailed explanation of goods or services for which the application is made. Maximum 500 words.
• A document stating the use of the trademark (first date) and by whom.
• Trademark to be represented in its particular size and format.
• 5 copied of additional representation of the mark along with the goods and services. The details of the applicant to be mentioned.
• Specifically for Color mark, there needs to be one application with black & white representation of mark and 5 with the color mark.
• For an application demanding 3-D mark, it should attach a 2-D representation or a photograph.
• For packaging trademark, there should be minimum of 5 different looks of the product that is to be attached.
• The translation is important, if there is any non-English word it is must to be translated into English for better comprehension.
• For an application that claims priority, information about the date of earlier application along with a number of applications and the state or country in which the earlier application was filed is furnished.
• Another important document to be submitted is the Power of Attorney which should have the name and status of the proprietor. It is not necessary to notarize the Power of Attorney.

What will happen if you do not respond to a Trademark Objection?

If there is an objection on your trademark then you need to put in effort and respond to the objection in order to retain the trademark rights, otherwise there can be the following consequences;

• You application can be rejected due to the lack of interest of the trademark owner in responding to the trademark. A response to the trademark objection will more likely give you a chance to get through your registration if a proper justification is delivered to the trademark examiner. Otherwise, your trademark application will be rejected.
• You can lose your brand's identity in the market that you have been working under a recognized TM. In order to save the brand you need to respond to the objection and get the clearance.
• If you do not respond to a trademark objection then it is more likely that the trademark will be removed from the registry and thereby you will lose the trademark rights. So, to be in business and enjoy the trademark rights & keep oppositions away you need to respond to the Trademark Objection.

What is the difference between Trademark Objection and Trademark Opposition?

A trademark opposition means that a party can stop another party from using their brand, product or service mark, whereas a trademark objection is given by the examiner itself and not by any third party.

What are the reasons for Trademark Objection?

• Lack of distinctiveness (Section 9): When the Registrar/Examiner considers the trademark to be generic and descriptive of the goods/laudatory/indicating the quality or nature of the good, and then the trademark doesn’t stand out in the market and is objected.
• Similarity with pending or registered marks (Section 11): When there is an identical/similar trademark in respect of identical/similar goods/services already on record in the Trade Mark Registry.

How to avoid Trademark Objection?

To avoid Trademark Objection, you need to select a proper trademark and for that keep in concern the following points:

• In-depth research of the existing trademarks and thorough study of the database of trademarks.
• Thinking of out-of-the-box, innovative, creative fancy and arbitrary mark which strikes consumers and potential customers.
• Avoiding deceptive, disparaging and offensive language.
• You can also take the advice of the trademark attorney and consult the Trademark Manual of Examination Procedure (TMEP) for further help.
• Also, the trademark should give the feel of the quality product and a visible outpost of the company.

When can I use ® with my Trademark

The ® mark can be used the application gets approved from the government. Generally it takes about 8 months to 2 Years for a TM to be approved.

Can a single trademark be used for services belongs to different classes

Yes, single trademark application can be filed for different classes services but the fees for filling in each class is increase every time just like you have filed a single application for one trademark.

Do I have to hire an attorney when filing to register my trademark?

A trademark application can be filed by your own. Attorney’s are needed for complex cases that might arise after you file your trademark. Trademark is a simple thing to file and hence, you can even file the trademark application online to save time and money. Also, you can even start the trademark process by using online services and then later on switch to trademark attorneys, if needed.