TRADEMARK OBJECTION

TRADEMARK OBJECTION

The applicant must cautiously take necessary steps in order to handle the Trademark objection as raised by the registrar.

Generally, during the course of Trademark registration, the Registrar raises objection on the proposed trademark. It is one most important part of the trademark registration process.
 

The registrar can raise the objection on the grounds such as the applied trademark has the similarity with the existing trademark, the applied trademark seems offensive to a selected religion, the design is not distinctive etc.
 

The applicant has to provide a convincing reply on the objection as raised by the registrar, otherwise the application might get cancelled. The reply needs to be filed within a month from the date of objection issued by the registrar. 
 

Trademark is used as a non-identical symbol, word or logo by an entity to differentiate its product or services from those of others. Trade mark establishes a differentiation between one entity’s product or services from that of the others.
 

The entities take trademark registration in order to protect their brand, logo, symbol or word from being copied by the others.
 


 

Trademark is classified as an intellectual property thus protected from infringement. Trademark Act, 1999 governs the laws of trademark such as registration, protection and the penalties.

The trademark registration is valid for 10 years and the same can be renewed after paying the prescribed fees of Rs. 9,000/- as per the Trade Marks Rules, 2017.
 

Grounds of Objection under Trademark

An objection is one of the primary stages in the registration process of trademark. Either the Examiner or the Registrar or any third party files the trademark objection.

The Registrar or the Examiner issues an objection under Section 9 and Section 11 of the Act, as discussed below-

a.  Section 9 - This section speaks about the absolute grounds of refusal. As per this section, trademark is objected in the case when the logo or brand name or word or mark fails to differentiate the goods or services of one person from that of the other person.

b.  Section 11 – This section speaks about the relative grounds of refusal. According to this section, the registrar or examiner files the objection when the propose trademark is similar or identical with the already existing trademark.

The status of the Trademark application will change to ‘Objected’ after filing the objection. The grounds on which the trademark is being objected must be mentioned in the objection application. 

As per the Act, the Registrar provides a due opportunity to the applicant in order to defend his Trademark application.
 

Detail process of filing a Trademark Objection reply

The applicant has to file an apt reply to the registrar within a month of issuance of Trademark Objection. The process regarding the filing of Trademark Objection reply is as follows:
 

•  To carefully study the objection ground

After receiving the objection, the applicant must properly study and analyze the grounds of objection so that the applicant should not make any mistakes while filing the reply of trademark objection.
 

•  To prepare and file the trademark objection reply

The applicant after the properly analyzing the objection letter, must prepare an apt reply based on the objection letter. With proper rules and regulations and with the requisite documents, the trademark objection reply must be filed online on the website of Trademark.
 

•  Hearing

If the registrar or examiner is satisfied with the objection reply made by the applicant, then they will proceed with the registration and will advertise the proposed trademark in the Trademark journal. In case, the registrar or the examiner is not satisfied with the objection reply, the authority will as for further clarification. For this the examiner will fix a date of Trademark hearing and the same shall be informed via hearing notice.
 

•  Publication of Trademark in the Trademark Journal

After the hearing, if the trademark is accepted and the same is granted, then it will be published in the Trademark Journal. But if the trademark is rejected during the hearing, then refusal order will be passed by the concerned authority. The reason due to which the trademark got rejected will be stated in the refusal order.
 

•  Review Petition

The applicant has the option to file a review petition within 30 days of receiving the order of refusal. In the petition, the applicant must mention the reason on which grounds the order must be reviewed.
 

•  Registration

Once the trademark is published in the Journal, it will be continuously open for 4 months for the opposition. If no such opposition is received within the stipulated time, then the registrar will proceed towards registration of Trademark. A registration certificate will be issued containing the logo along with the class in which it is registered.
 

Important things to consider while drafting the objection reply 
  1. Must mention at least 3 or 4 case laws in order to support your reason.
  2. Do not use more than 3 or 4 page while drafting the reply.
  3. Cite a current status to the department in brief.
  4. Reply must be clear and to the point.
  5. Must put a prayer clause at the end.
  6. Make sure to file the reply within the stipulated time i.e. within a month of issuance of the objection letter.
     

FREQUENTLY ASKED QUESTION'S (FAQ’s)
 

What is Trademark Objection?

Generally, during the course of Trademark registration, the Registrar raises objection on the proposed trademark. The applicant must cautiously take necessary steps in order to handle the Trademark objection as raised by the registrar.

It is one most important part of the trademark registration process. The registrar can raise the objection on the grounds such as the applied trademark has the similarity with the existing trademark, the applied trademark seems offensive to a selected religion, the design is not distinctive etc.

The applicant has to provide a convincing reply on the objection as raised by the registrar, otherwise the application might get cancelled. The reply needs to be filed within a month from the date of objection issued by the registrar. 
 

Who issues the Trademark Objection?

The Trademark objection is issued by the Registrar or the Examiner.
 

On what grounds the Trademark objection can be issued?

An objection is one of the primary stages in the registration process of trademark. Either the Examiner or the Registrar or any third party files the trademark objection.

The Registrar or the Examiner issues an objection under Section 9 and Section 11 of the Act, as discussed below-

a.  Section 9 - This section speaks about the absolute grounds of refusal. As per this section, trademark is objected in the case when the logo or brand name or word or mark fails to differentiate the goods or services of one person from that of the other person.

b.  Section 11 – This section speaks about the relative grounds of refusal. According to this section, the registrar or examiner files the objection when the propose trademark is similar or identical with the already existing trademark.

The status of the Trademark application will change to ‘Objected’ after filing the objection. The grounds on which the trademark is being objected must be mentioned in the objection application. 

As per the Act, the Registrar provides a due opportunity to the applicant in order to defend his Trademark application.
 

What is Section 9 under the Trademark Act, 1999?

Section 9 speaks about the absolute grounds of refusal. As per this section, trademark is objected in the case when the logo or brand name or word or mark fails to differentiate the goods or services of one person from that of the other person.
 

What is Section 11 under the Trademark Act, 1999?

Section 11 speaks about the relative grounds of refusal. According to this section, the registrar or examiner files the objection when the propose trademark is similar or identical with the already existing trademark.
 

Who governs the Trademark Registration?

Trademark registration is governed by the Trademark Act, 1999.


Within what time period the objection reply should be filed?

Within 30 days of issuance of Trademark objection, a reply should be filed related to same to the Registrar or the Examiner.
 

What happens if the objection reply gets rejected?

In case, the registrar or the examiner is not satisfied with the objection reply, the authority will as for further clarification. For this the examiner will fix a date of Trademark hearing and the same shall be informed via hearing notice.
 

Conclusion

One should give a precise reply to the objection issued by the trademark registrar and should submit the same within the aforesaid time limit, in order to save the trademark application from being cancelled. It is also advised that the applicant must check the status of the trademark application on a regular basis in order to avoid any future legality.


Edited by Minu Mishra

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