What is Trade Mark Application Status Objected And How To Reply On Trademark Objection
BOOK A FREE CONSULTATION
Get help from an experienced legal adviser. Schedule your consultation at a time that works for you and it's absolutely FREE.
Trademark registration can be defined as the registration of company’s logo, brand name, etc. to secure it in a legal way in order to protect it against its use by the other than the owner of that trademark.
This becomes a difficult taskto distinguish the products with identical product logo/ brand. In order to do so, one has register their unique brand name/ logo/ mark and can also avail the benefit of its protection. It becomes really crucial to register the brand/ logo under the government of India as “TRADEMARK.”
Trademark Registration – Meaning
In simple words Trademark is an ownership of brand name or logo, taglines, captions, business name etc.
Trademark can be anything - a symbol or a word, which is to be used by the business operator to promote their goods or services or to discriminate one service from another.
Advantages of Trademark Registration
- It provides legal right and protection to the owner against infringement
- Creates brand value and a place in market
- Provides a recognition of the quality and purity of the product or services
- Helps in establishing goodwill and trust of the products for customers
- Can apply for Global Trademark Registration In future
According to Section 9 of the Trade Marks Act, 1999, when the application to register a trademark is applied, the trademark officer has a full right to accept the application or raise an objection against it on one or several ground depending on the scrutiny of the documents and after doing the search in trademark directory.
This raises two possibilities - eithertherequested application will be accepted, or will be rejected.
According to the Trademark Act, the authorities can refuse to register a under several grounds and can mark the application status as either with any two cases –
- Trademark objection
- Trademark opposition.
Difference between Trademark Objection and Trademark Opposition –
According to Trademark Act, 1999 the trademark can be refused and marked under Trademark Objection or Trademark Opposition. It can be –
- Trademark examiner can raise a trademark objection under Section 11 or Sections 9(1) of the Trademarks Act.
- The trademark opposition can be raised by any person when the trademark will be published in trademark journal under the Trademark Act of India.
If there is any Trademark Objection, Trademark Authority provides a chance to the applicant to revert on it with counter-reply. Depending upon the counter revert from the applicant, the application will be accepted or rejected.
What is Trademark Objection
Trademark Objection is the first stage of examination of the Trademark application in the registration process, where the trademark controller raises an objection against the trademark application. The notice of the objection has all the details with the reasons of its objection.
This objected trademark application can be counter-replied for its approval – this is known as Trademark Objection Reply.
Trademark Objection can be due to
- Incorrect details of the applicant on the trademark application
- Failure/ incorrectly executed of Form TM-48 (power of attorney)
- Filing of Incorrect Trademark Form
- Trademark application filled with incorrect Trademark Class
- Identical with any existing trademark
- Trademark doesn’t possess any distinctive character for the product or service applied for
- Deceived by public by any reason such as through its nature, use, quality etc.
Timeline for Counter-Reply of the Objected Trademark
The Trademark Application can be reviewed by Trademark Examiner within 1-2 months from the date of application. The status can be checked on - http://www.ipindia.nic.in/ .
The counter reply to the notice of the trademark objection is to be applied within 30 days of the receipt of the examination report. Any failure in this will result in the change of application status from “objected” to “abandoned”
Procedure to Respond to a Trademark Objection
Once a trademark objection report is received, the applicant is provided with a detailed description of the reasons justifying why the trademark application is objected.
The authorities provides a time of 30 days to file revert with proper justification. This response or counter revert to an objection in a trademark examination is termed as “Reply to Examination Report” and can be submitted by anyone - the trademark applicant or an agent authorised by the trademark applicant through power of attorney
The response can carry supporting documents or any affidavit in support of the application if required and it can be submitted online or could also be submitted by person or post.
Reasons For The Trademark Objection
Objections as to Formality Requirement
Corrective Measures:- In this case, the trademark applicant shall comply with the requirements as desired by the trademark officer and submit the reply in form TM 16.
Wrong Classification of Trademark Class
Corrective Measures:- The applicant can file a request for amendment of the application by removing the items that do not fall in the relevant class. The applicant can also add the trademark class according to the products if required with the additional fees.
Trademark Lacks Distinctiveness
Corrective Measures:- The applicant reply to examination report with a remark that the trademark applied for registration is capable enough to distinguish the goods or services.
The applicant should submit an affidavit as evidence for the use of the trademark along with supporting documents.
Identical or Similar Trademark Exists
Corrective Measures:- In this case, the applicant can submit a reply to examination report mentioning the details that how and why his trademark is not identical to the existing one along with supporting evidence.
In addition, the applicant can also produce consent or NOC from the owner of the exiting trademark with whom the applicant’s trademark is similar with.
Incorrect Trademark Form
Corrective Measures:- If the application is made on Form TM-1 for certification mark is found to be incorrect, then the form of the application should be corrected as TM-4 by filing a request on form TM-16.
Incorrect Trademark Applicant Name
Corrective Measures:- The applicant can file for revert for this objection by requesting to correct trademark application by filing a request on form TM -16.
Failure to File Trademark Form TM-48
Corrective Measures:- The applicant can file the application with a duly stamped Power of Attorney in favour of a particular agent with Form TM-48 and requesting to correct trademark application by filing a request in form TM -16.
Incorrect Address on Trademark Application
Corrective Measures:- Can be corrected by filing a request in form TM -16.
Vague Specification of Goods or Services
Corrective Measures:- Can be corrected by filing a request in form TM -16 by adding the specification of exact items of goods/ service in respect of the trademark class is sought to be registered, by filing a request on form TM-16.
Trademark Lacks Distinctive Character
Corrective Measures:- Trademarks which are not capable of distinguishing the goods/services are liable for objection under absolute grounds for refusal of trademarks.
In order to overcome this the trademark applicant can submit proof to show that the mark has acquired a distinctive character by virtue of its prior use.
Trademark is Deceptive
Corrective Measures:- An objection as to deceptive trademark can be overcome if the applicant seeks to exclude goods or services from the specification by filing Form TM-16.
To form a brand, it’s important to apply for Trademark Registration, but to maintain it is more difficult. If the objection in the application is raised, it doesn’t mean that one will not get the certificate, timely filing of the trademark objection reply can save you. However, any failure can lead to an abandonment of the trademark application. To make sure, that you application doesn’t get abandoned, don’t hesitate to take a help from the experts. We at Corpseed helps you to get the proper filing done for you Trademark application
Corpseed Three Easy Steps to Register Your Trademark
- Connect with team Corpseed @ +91 7558 640 644
- We will discuss your requirement & file objection documents with authoritise
- Trademark issued to you