Trademark Examination and Objection Process in India
After a trademark application is filed, the mark undergoes an examination by the Trademark Office. The purpose of this examination is to ensure that the mark meets all of the requirements for registration under Indian law.
- If the Trademark Office finds that the mark does not meet all of the requirements for registration, it will issue an Examination Report with the trademark status as objected .
- This trademark examination report will set forth the reasons why the mark cannot be registered and provide the applicant with an opportunity to file the trademark objection reply.
- The objected Status in Trademark will be revoked If the applicant responds to the office action within the timeline.
- If the reply to objection of trademark registration is satisfactory then the Trademark Office will publish the mark in the Trade Marks Journal. Once published in the Trade Marks Journal, third parties will have an opportunity to oppose registration of the mark within four months from the date of publication.
- If no one opposes registration of the mark, or if any opposition is unsuccessful, then registration will be granted and a certificate of registration issued.
The most common reason for trademark objection in the examination report is
1. The trademark applied is a common word or lacks distinctiveness
2. The trademark is identical to an existing trademark application applied or registered with the Indian Trademark Office.
3. Or both
Trademark Objection Procedures in India
Indian Trademark Act set forth the requirements for the registration of a trademark in India.
In order to be registered, a trademark must be unique to the goods or services of the company compared to its competitors. If the trademark meets these requirements, it is eligible for registration.
However, there are some marks which are not eligible for registration under Section 9 and 11 of the Trademark Act, 1999. These include marks which are
- generic terms or
- descriptive words without any secondary meaning
- Trademarks which are merely surnames or geographical names without any secondary meaning, and
- Trademarks which are deceptively similar to an existing registered trademark or a well-known trademark.
If a trademark is found to be ineligible for registration the applicant will receive an office action from the Trademark Office setting forth the reasons why the mark cannot be registered. The applicant will then have an opportunity to respond to this office action and overcome all objections. If successful, the mark will be published in the Trade Marks Journal and third parties will have an opportunity to oppose registration within two months. If no one opposes registration or if any opposition is unsuccessful, Registration will be granted and a certificate of registration issued.
Things You Can Understand from the Trademark Examination 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 Grounds of Refusal
- Lack of distinctiveness
- Indicates any other following- geographical location, quality, quantity, purpose, value, etc.
Relative Grounds of Refusal
- Similar or identical to earlier trademark- deceptively similar.
- Well-known trademark
- Similar or identical to earlier trademarks, but goods or services are dissimilar.
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.