An objection to a trademark can be caused by the following reasons:
Trademark applications can get objections under more than one grounds. Following are some grounds on which an examiner can object to the Trademark registration:
It is possible to divide the grounds of refusal for Trademark registration into two parts:
Absolute grounds of refusal – refer to marks that are not distinctive or visually appealing.
An earlier trademark or related right always forms the basis for a relative ground of refusal.
Get to know more before you go for a trademark objection reply.
Trademarks that may cause confusion due to something inherent in the mark itself or its usage, such as the nature, quality, or geographical origin of the goods and services. It is possible to overcome an objection to a deceptive trademark by filing Form TM-16.
Lacks Distinctive Character
Trademarks that are not capable of differentiating between one person’s goods and services from those of another are devoid of any distinctiveness and thus can get objection under absolute grounds for refusal of trademarks.
Existence of a similar trademark
An objection may be raised if the same or similar trademarks are registered by different trademark owners for the same or similar goods or services.
False or vague specification of goods
Suppose the specification of goods or services is too vague or includes a wide range of goods or services. Registrars can then raise objections as follows.
“There is a lack of clarity in the listing of goods and services in relation to class xx. Please provide specific items in respect of which the trademark is sought to be registered by filing a request on form TM-16”.
Incorrect address on trademark application
The trademark applicant failed to mention the address for service in India or the principal place of business. In order to raise an objection, follow these steps:
“The applicant’s principal place of business should be brought on record by filing a request on form TM-16” or “The applicant’s address for service in India should be brought on record by filing a request on form TM-16, since the applicant does not have a principal place of business in India.”
Incorrect name of the applicant
It is important that the applicant enters his or her name correctly in the application. Objecting to an incorrect name on a trademark application, the examiner would do the following:
“The application appears to have been filed in the name of a partnership firm; the names of all partners should be included in the TM-16.”
The trademark form is incorrect
The examiner will raise an objection if the trademark application is not on a proper form:
“For certification marks applied for in respect of goods or services falling within a class, the form of the application will need to be corrected as TM-4 by filing a request on form TM-16.”
Trademark Examination Report
An examination report is sent to the trademark applicant after the trademark application has been submitted and examined by the trademark officer. With the details of the trademark application, it is also posted on the trademark office’s website.
Once the trademark examiner has objected, the applicant or authorized agent has the chance to reply with a rebuttal.
As a result of the applicant’s response, if the objection can be waived off, the trademark application is accepted for registration. In the journal, the trademark is published.
Reply to Trademark Examination Report
A trademark applicant or an agent who has been authorized by the applicant can respond to an objection in the trademark examination report.
You can submit this reply online through the trademark office website or by mail or in person.
The reply to the examination report must also include any affidavits and supporting documents.
Objections as to Formality Requirement
The applicant must comply with the conditions desired by the officer if formality requirements are objected to.
For instance :
Imagine that the trademark applicant has asked the person whose portrait appears on the trademark for consent. Alternatively, the applicant may state that the image appearing on the trademark is a generic image and submit a copy of the person’s consent in writing.
Trademark Classification Objection
As a result of the goods or services mentioned in the application not falling into the correct trademark class, the trademark applicant can file a request to correct the class or state as per the classification of goods or services published by the registrar have been correctly classified.
Getting proper legal advice is required for the correct classification of goods and services before responding to the examination report for objection.
Lack of distinctiveness is the objection to the trademark
As a response to an objection to the non-distinctiveness of the trademark, the applicant may submit a reply to the examination report demonstrating that the trademark is capable of distinguishing the applicant’s goods or services, or that the trademark has acquired a distinctive character due to its extensive use before the application date for relevant goods and services.
If the trademark has been extensively used, it has acquired distinctiveness. An affidavit and supporting documents should be filed as evidence of use.
There is an objection to an identical or similar trademark
In this case, the objection is based on similar or identical trademarks for similar goods or services. The applicant may also produce consent or no consent objection from the owner of marks listed as conflicting in the examination report.
Examine the report of the examination
Analyzing and examining the report is the first step towards determining why the objection has been raised.
Answer the objection by drafting a reply
In the next step, you must prepare an objection reply that includes the proper response to the objection and the supporting rules of law and judgements that support your claim. Along with that, you can also provide all other supporting documents and evidence that validates the response.
Please reply by the deadline
The reply to objection has to be mandatorily filed within 30 days of the examination report with supporting documents.
In case Reply is accepted: If the response is accepted successfully, the application shall be processed further for registration and advertisement in the Trademark Journal.
If the application is rejected: If the application is not accepted, the registry will mark the matter for hearing, and the date and time will be notified to the Trademark Agent.
Documents required for filing trademark objection reply: A formal reply to the examination report is compulsorily required to be submitted with sold clarifications and evidence on to why the application is to be accepted. Following are the documents that are required for filing the reply for the Trademark objection.
Power of Attorney
Reply to Examination Report
A document proving that the trademark is being used commercially. It includes documents such as invoices, letterheads, communications, visiting cards, screenshots of websites, brochures, financial statements, and all other evidence where the trademark is being used. It is very unlikely that a trademark will be rejected straight away because the applicant usually gets to be heard. There are very few chances of getting the trademark rejected if the objection reply is prepared perfectly.
Steps in the trademark objection process
A Complete view on trademark objection