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Trademark Objection

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Overview

Every Business has a unique word or visual symbol that distinguishes it from other goods. But this symbol or word can be used by some other entity as well. Thus, to protect these intellectual properties, a business uses a legal registration called trademark registration Trademark registration protects all these properties of a business from being used by another business.

If any business wants to register a trademark, it must file the application with the relevant trademark registrar. Once you file your trademark application, the registrar will process it and provide you an examination report. The trademark examination report allows the advertisement of the trademark application where the examiner could object to the registration of the Trademark.

If in case the trademark registrar raises an objection for the trademark application, then applicant gets an opportunity to file a written reply for the objection. But it must be done within 30 days from the objection made.

The reply that you give to the trademark examination report should include all the facts and evidence that why the Trademark should be registered in your favor. You can also include any supporting pieces of evidence if you have. If the examiner finds your reply to the trademark objection satisfying enough, then you would be allowed to publish the trademark journal before its registration.

Trademark Examination Report

According to section 21 of the Trademark Act, irrespective of commercial or personal interest in the matter, any person can file a trademark notice. The question of bona fides of the opponent does not arise. Hence a trademark obstruction can be filed by a consumer, member of the public,any opposition or any other person. In order to file a trademark opposition it is a compulsion for the person to be a prior registered trademark owner.

Responding to a Trademark Examination report

The response to a trademark examination report can be filed by the applicant or any authorized agent as a reply to the examination report. Any applicant can submit a reply online on the official website. An applicant can also post it by a person. But all the affidavit or supported documents must attach along with a response to examination report.

Opposition as formality requirement:

In case the objection is a formality requirement, then the trademark applicant should meet the Trademark office's prescribed requirements. For the situation, if the trademark office has called approval of the person whose representation comes on the Trademark, then the applicant may file permission from the person. The written document should include all supporting documents or the state that the portrait is not any specific person. Rather it is just general image of a man/woman.

Objection for the wrong classification of a trademark class

In case the examiner makes an objection because the application does not fall under the appropriate trademark class. The applicant can file a request to correct the class of the Trademark. In such a case, you have to rectify and state the Trademark as per prescribed classification of goods and services.

If investigators make an opposition as some of goods and services do not fall under the category, then the applicant can file a petition for the amendment of the application. In such requests, the applicant has to delete the goods and services that don't fit the classification. The applicant can also state that all the items are as per the classifications. But for that, you have to show all the supporting documents and evidence.

It is crucial to obtain adequate legal advices so that you can file the application as per the prescribed classification of trademark office. Proper legal advices help submit better reply to the objection as to wrong classification of trademark class.

Objections when Trademark lacks Uniqueness

If the trademark examiner makes an objection as to the Trademark lacks Uniqueness, the applicant can submit a reply to that objection. The response must include all the facts to authenticate that the Trademark applied for enrollment is unique enough to distinct from other goods and services.

Or you may also prove that the Trademark acquires a unique character because of its continued use concerning the goods and services. But you have to reply within the due dates. And if any trademark has gained Uniqueness due to its continued use, then the application must file an affidavit as proof of Trademark's use with the supporting document.

Objections for identical Trademark

Once the advertisement of the trademark is done in the Trademark Journal, any person with a valid ground can oppose registration of the trademark for a period of 3 months. A person can file the opposition at the Trademark Registrar Office and cannot take the opposition directly to a court or the Appellate board (IPAB). If the trademark opposition is successful, the registration of the trademark will be refused and if the opposition application is rejected the trademark will be registered.

Major reasons for Trademark objections

There are several reasons for trademark objections. However, some of the major reasons for objections are:

Incorrect Trademark form:

If the applicant doesn't file the application for Trademark in the correct form, the examiner may object. The trademark registration application is usually filed in the form of TM-1. And for obtaining the correct certification mark for goods and services falling in a class filed in TM-4, the applicant must file the correction in TM-16.

Step to rectify

If the objection is made by the trademark examiner that the goods and services don't fall under the correct class, the applicant can file the reply by requesting for the correction in form TM-16.

Incorrect applicant name in the Trademark

Every applicant filing for a trademark application must mention the correct applicant name. If the trademark examiner finds any inaccuracy in the name, then he can object. If the request is registered with name of the partnership firm, all the associates should mention their names by filing a request on form TM-16.

Step to rectify

Any applicant can reply to an objection made for an incorrect applicant name. But that you have to file a request on the form TM-16.

Not filing the trademark form TM-48

When a trademark attorney/agent files an application for trademark registration on behalf of the applicant, he/she must attach the form TM-48. In the cases where the TM-48 is not attached, or the application has been incorrectly executed, the examiner will raise an objection. The opposition will declare that the request has been presented by another person, and a duly stamped power of attorney in favor of the agent must be filed.

Step to rectify

The application makes correct the mistake by filing a request to correct the trademark application on the form TM-16.

Incorrect address

In the cases when a trademark application has no registered place of the Business or the address of the applicant is not mentioned, the trademark examiner will raise an objection. The objection will state that registered place of Business must be brought on record by filing the form TM-16. The applicant's address can also be brought in to record by filing the same form.

Step to rectify

The application can reply to the objection by raising a request in the form of TM-16.

Indistinct specification of goods and services

If the goods and services in the trademark application are too indistinct, or a large variety of goods are in one class, the examiner can raise an objection. The objection made by the trademark examiner will state that the Trademark applied for the incorporation for a class is very indistinct and wide. You have to provide the exact items to be sought in a class.

Steps to rectify

The applicants filing the registration can reply to the objection made by requesting to correct the Trademark. In such cases, you have to file form TM-16.

Existence of similar Trademark

If the Trademark applied for registration is found to be similar to an earlier trademark of a different owner, then the examiner will raise an objection. The opposition will declare that Trademark implemented for registration would not be able to enroll under section 11(1) of the Trademark rules 1999. This means that the Trademark applied is identical to any goods and services from the past records. Such existence will create confusion in public.

Right step

In such cases, the applicant can reply to the objection made by the trademark examiner by providing all the evidence.

Lack of Uniqueness

The Trademark those are not capable of being unique from other goods, and services lack distinctive characters. Thus they become liable for objection by examiner. To overcome any such objection, an applicant must submit adequate proof showing that the Trademark has gained Uniqueness as of its extensive use.

Deceptive Trademark

A trademark examiner can also raise an objection; if the Trademark submitted has the potential of misleading public. There are many reasons for a trademark being elusive such as nature, quality, or geographical origin. In any such cases, the applicant can reply to the objection by filing form TM-16.

Document Required

1. Documents required to get file objection
  • The documents required shall be communicated having an analysis of objection.

Time Lines

  • (10 to 15 Days)
  • Purchase the Service
  • Upload / send the Documents
  • Discussion with expert
  • Filing of application with registrar authorities
  • Receipt of acknowledgement Certificate
  • Confirmation to client

Service Covered

Pricing for what you want required service

Basic

2750*
  • Expert Consultation
  • Filing of objection notice against filing of trademark application filed by us.

Business

4450*
  • Expert Consultation
  • Filing of objection notice against filing of trademark application filed by Others.

Enterprise

5450*
  • Expert Consultation
  • Filing of objection notice against filing of trademark application along with notice sent to the other trademark applicant.
  • Notes:
  • * This price is inclusive of all Govt filing fee and excluding GST amount.

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