What is Trademark Objection?
Once a trademark application is filed, a Trademark Examiner examines the application and makes a search of earlier trademarks – which are identical or similar to the mark being examined. The findings of the Trademark Examiner are compiled as the trademark examination report.
Reasons for Objections - Explained
The grounds of refusal of TM application can be divided into two parts:
A. Absolute grounds of refusal :
Section 9(1) to (3) of Trade Marks Act, 1999
Section 9(1) prohibits the registration of those trademarks:
a. which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
b. which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services; or
c. which consist exclusively of marks or indications which have become customary in the current language or in the bonafide and established practice of the trade.
Section 9(2) states that a mark shall not be registered as a trademark if —
a. it is of such nature as to deceive the public or cause confusion;
b. it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
c. it comprises or contains scandalous or obscene matter;
d. its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Section 9(3) A mark shall not be registered as a trademark if it consists exclusively of—
a. the shape of goods which results from the nature of the goods themselves; or
b. the shape of goods which is necessary to obtain a technical result; or
c. the shape which gives substantial value to the goods. Explanation.— For the purposes of this section, the nature of goods or services in relation to which the trademark is used or proposed to be used shall not be a ground for refusal of registration.
B. Relative grounds of refusal:
Section 11 of Trade Marks Act, 1999 lists the relative grounds for refusal of registration.
Section 11 of the Act stipulates that where there exists a likelihood of confusion on the part of the public because of the identity with an earlier trademark or similarity of goods or services, the trademark shall not be registered.
In other words, where there is similar trademark exist in the Trademark register the trademark shall not be registered.
The term “earlier trade mark” means a registered trademark or an application which has a date of application earlier than the trademark in question.
Timelines for Filing Reply to Examination Report
The reply to Examination Report has to filed within 30 days of the examination report with supporting documents. Also, the reply to the trademark examination report should be drafted with legal expertise referring decided cases on similar matters and judgements by Tribunals / Courts / International references.
Extension of Time To File Objection Reply:
In case the reply is not filed within 30 days of the report, the application will be declared as abandoned. The applicant can request the registrar to extend the time limit of 30 days by applying TM-M electronically through the trademark agent with a valid reason for the delay in filing the reply.
If the reply to the examination report is to be filed through a different trademark agent, a fresh Power of Attorney is also required. Once the filing is done then need to draft objection reply for the same.
Consequences of non-filing of Reply
Timely filing of reply to trademark objection is a crucial step of Trademark Registration Process. If the reply to examination report is not filed within 30 days of notice / or by the extended time, the Trademark application shall be marked as abandoned by the Trademark Registry.
In case the application has been marked as abandoned, the applicant has to file a fresh application for the Trademark.
How to File a Trademark Objection Reply in India?
Trademark Objection Response
When the registrar is of the opinion that the application is liable for objection, the status of the application is changed to OBJECTED. A copy of examination report will be communicated to the trademark agent mentioning the reason for the objection and the applicant has to file reply to the same within 30 days of the objection.
Analyse the examination report
First step is to analyse the examination report and to determine the reason for the objection raised.
Draft reply to Objection
Next step is to prepare an objection reply mentioning proper answer to the objection raised with supporting rule of law and judgments supporting the case, along with other supporting documents and evidence that validates the response.
Timelines for reply
The reply to objection has to filed within 30 days of the examination report with supporting documents.
If the Reply is accepted
If the response is accepted, the application will be processed further for registration and advertisement in the Trademark Journal.
If it is not accepted
If it is not accepted, the registry will mark the matter for hearing and date / time will be notified to the Trademark Agent.
Documents Required
A formal reply to the examination report is required to be submitted with valid clarifications and evidences as to why the the application is to be accepted. Following are the documents required.
- 1. Power of Attorney
- 2. Reply to Examination Report (if any Earlier Filed)
- 3. Documentary proof of Trademark in commercial use which includes invoices, letterheads and communications, visiting cards, screenshots of websites, brochures, financial statements and all other evidences where trademark is being used.
How S.K. Agrawal & Co. Helps in Trade Mark Objection Reply?
With S.K. Agrawal & Co., you can file Trade Mark Objection reply seamlessly. You can file Trade Mark Objection reply in just 4 simple steps:
Step 1: Confirmation Mail Acceptance of our Proposal
Send confirmation mail at our email id regarding acceptance of our Proposal for Trade Mark Objection Reply. You can request a callback or directly call to our expert on phone number provided at our website. Our experts will contact you and clear all your queries.
Step 2: Send the Documents on our Email Id
Send below-mentioned documents on our email Id to file Trademark Objection Reply of your Trade Mark:
- Duly filled Checklist.
- Duly notarized and signed Power of Attorney.
- Other Supporting documents
The Trade Mark objection Reply from S.K. Agrawal & Co. is completely online and thus, you can save time and money as you need not have to visit our office. If you want to visit to our office you are most welcome.
Step 3: Document Verification by our Experts Team
Our expert team will verify the documents uploaded by you.
Step 4: Our Experts Team will File Forms on the Trade Mark Registry/Authority portal to Register Your Trademark
After the Trade Mark objection reply are filed on the Trade Mark Registry/Authority portal, the Trade Mark Registry/Authority will verify the forms submitted by our expert team.
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