Trademark objection is a process of examination followed by the Indian Trademark Office if it finds a discrepancy or needs more clarification before accepting the trademark for registration. During this process, the trademark application is scrutinized by the registry. The trademark office will also cite the reasons for the objection expecting the reply to the examination report to be filed within the timeline.
The most common reason for trademark objection in the examination report is
The trademark applied is a common word or lacks distinctiveness
The trademark is identical to an existing trademark application applied or registered with the Indian Trademark Office.
Trademark Objection Process:
- Once the application for trademark registration is filed, the application is examined by the registry as per the guidelines given in the Trademark Act,1999.
- If the registry raises the objection after due and diligence, an official examination report will be issued by the registrar. This report is usually issued within 3 to 6 months from the date of application of the mark.
- Once the objections are identified, and a report is issued, the status of the application changes to “Objected.”
Once the examination of the mark is done, the report is issued. The following information can be interpreted from the report
- Whether The Mark Is Accepted Or Not?
- Is There Any Modification In The Application For Which TM-M Is Required?
- Whether Any Objections Are Identified- If Yes, Then Whether They Are Relative Or Absolute.
- In Case Of Objections Based On Similar Marks- Details Of The Conflicting Mark, Application Number, Proprietor Details, And The Mark Itself Are Provided In The Search Report.
- Relevant Provisions Of The Objections.
There are two types of objections raised during the examination report:
- Absolute refusal as per Section 9
- Relative refusal as per section 11.
Absolute Grounds of Refusal:
Section 9 lays down the absolute grounds of refusal. They are:
- Lack of distinctiveness
- Indicates any other following- geographical location, quality, quantity, purpose, value, etc.
Relative Grounds of Refusal:
Section 11 lays down the relative grounds of refusal. They are:
- Similar or identical to earlier trademark- deceptively similar.
- Well-known trademark
- Similar or identical to earlier trademarks, but goods or services are dissimilar.
Upon receiving the Examination Report, the trademark applicant or their agent should file a suitable reply confirming the reasons for the trademark and request the trademark examiner to accept the mark to proceed with the registration.
Trademark Objection Reply Process:
- Analyze the Report
- After receiving an Examination Report, the foremost thing to do is to understand the objections cited in the examination report to prepare an appropriate reply. Any discrepancies or ambiguity in understanding the report will result in the refusal of the trademark.
- Drafting the Reply
- Draft a reply and ensure to include all submissions and claims in support of your trademark and against the objection of the trademark office.
- Reasons for coining the mark.
- Check if the conflicting trademark is valid and in force.
Are you the prior user of the trademark?
- If so, then ensure you have cited the user evidence in your reply.
- Identify the differences from all the marks cited in the examination report by the registry.
- Relevant precedents and case laws
- Your submissions to prove that your trademark is eligible for registration.
- User Affidavit to establish the presence of your trademark with the proof documents of promotions, marketing, social media presence, bills, invoices, and other necessary supportive documents.
- Add Evidence and Citations
- The reply shall be filed along with the supporting evidence and the case laws/citations of the courts and tribunals to strengthen your arguments.
Requirements to Register a Trademark Online
In order to register your trademark with us, please click the link below. You can also get in touch with us and our trademark expert will guide you through the process.