Trademark Objection: Frequently Asked Questions

Trademark Objection: Frequently Asked Questions

When you are facing trademark registration, you may have to come across trademark objection and it is legal procedure. You might have some common questions in mind that would help you to overcome and face the trademark objection replay. Get all such questions answered here.

  1. After a trademark is registered, for how long is it effective? Renewal of trademark registrations is possible?

The registration of a trademark is valid for 10 years. You can renew it every 10 years, forever. To renew a trademark registration in India, a FORM TM-R must be filed one year prior to the expiration of the last registration date. In the case of physical filling, the renewal fee is 10,000, while in the case of e-filing, the fee is 9,000. TM-R must be accompanied with a surcharge if the renewal fee has not been paid by the expiration date of the last registration. The trademark may be removed if renewal fees and surcharges are not paid within six months of the expiration of the last registration. Restoring a trademark requires the completion of form TM-R and payment of the prescribed fees, as well as the applicable renewal fees (physical filing: 10,000, e-filing: 9000). 

  1. The trademark may be removed on the grounds that it is not used.

No, a registered trademark can be removed if it is not being used. It is possible to remove a trademark if it has not been used in the following circumstances, except as prohibited in clause 3 of section 47 of the trademarks act, 1999:

  1. There was no bona fide intention when the trademark was registered, and it had not been used as of three months before removal was requested; or
  2. The trademark was not used continuously for five years from the date of registration and an application was made after three months of the expiration date.
  3. Are sounds or smells registrable as trademarks? In what way are these marks defined?

Yes, sounds or smells can be registered as trademarks. However, they should be able to be reproduced graphically and should have a distinctive appearance. MP3 audio recordings of no more than thirty seconds’ length need to be submitted with graphical representations of notations for sound marks. Chemical formulas can be used to represent smells along with samples. For instance. 4711 is a cologne

  1. Is it possible to register a three-dimensional mark?

The answer is yes, a three-dimensional mark can be registered.

  1. How are Indian goods classified?

The Indian government adopts the International Classification of Goods and Services (Nice Classification).

  1. Is it possible to refuse registration of a trademark on the grounds of infringement?

Answer: Section 9 of the trademarks act, 1999 provides absolute grounds for refusal of registration of Indian trademarks. Section 11 provides relative grounds for refusal of registration of Indian trademarks. Trademark laws require trademarks to be distinctive and non-descriptive in order to be registered. Since non-distinctive or descriptive marks are generic to the trade, they cannot be granted a monopoly and are open for public use without exclusive rights. The following are examples of non-distinctive or descriptive marks:

  1. Dalal street for financial services
  2. Best restaurant for food services
  3. Strong furniture for furniture
  4. High tech for technology-related goods/services

Nevertheless, if a non-distinctive mark obtains distinctive identity in the market due to prolonged use or business growth, the restriction of section 9 is lifted. A good example is Reliance.

  1. When the third party is using the mark continuously and prior to the registered user, can the registered user prevent the third party from using an identical or similar mark?

Answer: It depends on the circumstances. If, however, the third party has been continuously using the mark for the same goods or services for which the mark of the registered user is registered, the registered user cannot restrain them from using an identical or similar mark. Third parties can only use the mark if they have been using it since a date before the date of use of a registered mark or registration date, whichever is earlier.

  1. Can a search be done to see whether identical or similar marks are already registered before applying for registration?

If you would like to conduct your own search (identical or similar), here are the recommended steps:

The following steps will guide you through the first step of checking your mark’s availability on a free government portal:

  1. a) Go to the government search portal, click here.
  2. b) Select the relevant class of search from a list of 45 different business classes.

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