A trademark may be in may form like a symbol, logo, tagline, or a combination of both representing an identity of a brand.
Mainly there are two specific reasons for trademark objection:
- Similar trademarks already exist
- Contains incomplete/wrong information
Reason for Trademark Objection
A trademark application needs to be made without any errors or false information. If there is any wrong information such as incorrect applicant name, principal place of business, or any other detail. It became a trademark objection.
Trademarks can create confusion among the public or which misleads the public are deceptively similar marks. It can be about the product’s real source/ description between the related goods or services, quality, its use, and character.
1. Incorrect/Incomplete details in Trademark form
If information relating to the applicant’s principal place, name, or any other information in the trademark application is not true or false then a trademark objection is most likely to be raised.
2. Wrong filing of a Trademark form
The examiner can raise an objection if the trademark application is filed in the form incorrectly. Form TM-48 must be filed and attached to the trademark application if the trademark application is filed by a trademark agent or attorney.
Grounds on which a Trademark application can be objected/refused.
An examiner can object the trademark registration on the following grounds:
1. Lack of Distinctiveness
Protection under trademark will not be obtained if a trademark lacks distinctiveness, creates a dilemma, and does not help the consumer in identifying goods or services.
2. The existence of an Identical Trademark
When your mark is an already registered trademark an objection will be raised.
3. False Specifications of goods or services
An application filed for Trademark mentioning incorrect class or a false description may lead to objections.
4. Offensive or obscene words as a part of or as a trademark
Any mark with obscene or offensive words or images as part of the trademark may face a refusal.
How To File A Trademark Objection Response?
The following are the steps to file a response in the event of a trademark objection:
Step 1: Analyzing Trademark Objection
The first step involves analyzing and studying the objection carefully, as any ambiguity in understanding can lead to incorrect filing of Trademark Objection Response.
Step 2: Drafting Of Trademark Objection Response
Following should be included in the next step i.e. how to draft a reply for trademark objection:
- A proper answer to the objection raised with supporting rule of law and precedents and judgments supporting the case
- How the conflicting mark differs with the mark of the applicant.
- Other evidence and supporting documents validating the response.
- An affidavit stating the usage of the trademark on the applicant’s website and social media channels; publicity material; advertisement in the media; availability of trademarked products on e-commerce sites, etc. with documentary proof attached for the same.
- File the drafted response online on the Trademark e-filing portal.
Step 3: Trademark Hearing
The application will be processed further, if the response is accepted, for registration and advertisement in the Trademark Journal. If it is not accepted, or there are additional clarifications demanded by the Trademark Examiner, there would be a trademark hearing scheduled and the same will be notified with a notice.
Step 4: Publication In The Trademark Journal
If the outcome at the hearing is positive, the mark will be accepted and will be ordered to be published in the Trademark Journal.
A Refusal Order will be passed, in the event of a negative outcome, explaining the reason for the refusal. The applicant has the option to file an appeal against the order within 30 days from the date of the Refusal Order mentioning the grounds of appeal on which the order must be reviewed.
Step 5: Registration
Trademarks will be open to scrutiny for four months once it is published in the trademark journal. The mark will then proceed towards registration if no third-party oppositions are filed within that period, and the Registration Certification will be issued. If an objection is filed the opposition proceedings will take place as per the prescribed rules of the law.