How to Deal with Trademark Objection Raised ?

By Trademark Bazaar - 12th January 2018

How to Deal with Trademark Objection Raised ?

Once an application for registration is filed by the applicant it is reviewed by the Trademark Registry to ensure that it is complete in all respects.

While reviewing the application the examiner verifies the database of Trademark Applications received to Registry. After the review is completed by the registry, the examiner may issue a positive report and pass the application for advertisement in the Trademark Journal, which is considered as “Accepted & Advertised”. On the other hand, if examiner observes any identical or similar Trademark already applied or registered, the same is communicated to Applicant through publishing Examination Report. The application status, in this case, changes to object. Further, an alert “Awaiting Reply to Examination Report” is displayed.

Grounds for objection

An objection can be raised by the trademark registry under section 9 or section 10 on following grounds-

Absolute Grounds for Refusal (Section 9):

1. The trademark chosen is not capable of differentiating the goods or services of one person from those of another person

2. The trademark is indicating 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 (e.g. Tasty Snacks)

3.  If the trademark consists of scandalous or obscene matters.

4. The use of the trademark is prohibited under Emblems and Names (Prevention of Improper Use) Act, 1950

5. The trademark is likely to deceive the public or cause confusion.

6. The trademark consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practice of the trade;

7. The trademark is hurting the religious susceptibilities of any class or section of the citizens of India

Relative grounds for refusal (Section 11)

1. The trademark is phonetically similar to an existing trademark.

2. There is a possibility of confusion existing on the part of the public due to the identity of an earlier trade mark or similarity of goods or services.

3. There are few more grounds where Registry may consider issuing Examination report such as visual similarity in the design, pattern, fonts, and color combination in a logo as well as in Word mark applied for with the existing applications received by the Registry.

Other Common Grounds

1. Use of incorrect form of trademark filing.

2. Vague specification of Goods and Services

3. Incorrect details added in trademark application

4. Descriptive Nature of the trademark applied to

5. Wrong classification of Trademark Class, etc.

What should be done when the objection is raised?

After receiving the objection on the application filed the applicant or the attorney is required file a response to the examination report within the specified time after the comprehensive analysis of the ground of objection raised by the Examiner.

The applicant or the attorney shall draft a response in a manner which can construct supportive grounds and able to give proper reasoning why the mark applied for is unique in nature and does not fail to comply with the provisions of the said law.

Post Reply step

As soon as the Reply to Examination Report is filed on the portal, the status of the application is turned to “Objected” replacing the alert of “Awaiting to Reply.” Now, the applicant has to rest and wait for the further response from the Registry.

Further, if the examiner is satisfied by the reply filed the trademark will be advertised in the trademark journal. However, if the examiner is not satisfied then a hearing will be scheduled by the examiner.  

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