When you apply to register your trademark in India, the application goes through a detailed review by the Trademark Registrar. The Registrar’s role is to make sure your mark doesn’t clash with existing trademarks and complies with all legal standards. The review report often results in objections, where the official notices highlight issues that must be resolved before your trademark can be registered. Understanding what trademark objections are, why they occur, and how to respond effectively is crucial for businesses, startups, and entrepreneurs seeking to protect their brand identity in India.
This blog provides a comprehensive overview of trademark objections, grounds, and a step-by-step procedure for handling them.
What Are Trademark Objections?
A trademark objection is a formal notification issued by the Registrar after reviewing your trademark application. The objection outlines the specific reasons for the Registry’s refusal to approve the trademark. Objections can arise due to legal or procedural reasons, such as similarity to existing trademarks, lack of distinctiveness, or incomplete documentation.
Trademark objections are broadly categorized into three types:
1. Absolute Grounds Objections (Section 9 of the Trademark Act, 1999)
These arise when your trademark fails to meet basic criteria, such as distinctiveness, or does not qualify as a valid trademark under the law. Examples include:
- The trademark is generic or descriptive (e.g., “Sweet Juice” for fruit juice).
- The trademark is offensive or misleading.
- It resembles official emblems or national flags.
2. Relative Grounds Objections (Section 11 of the Trademark Act)
These arise when your trademark is similar or identical to an already registered or pending trademark, which might confuse customers or dilute the original brand.
3. Procedural or Technical Objections
Sometimes, objections are raised due to incomplete forms, missing documents, or errors in your application (like a missing Power of Attorney or wrong classification).
Step-by-Step Guide to Handling Trademark Objections in India
Step 1: Carefully Read the Examination Report
Once the Registry examines your trademark application, it issues an Examination Report. You will receive this report through your registered email or via the official IP India trademark portal. After receiving the report:
- Review each objection carefully.
- Identify if the objections are absolute, relative, or procedural.
- Note deadlines – you usually have 30 days to respond (with a possible extension of 2 months).
Step 2: Understand Each Objection Thoroughly
Take time to understand why the objection was raised. Here is the meaning of common objections
- Absolute Grounds: The Registrar believes your mark is too generic, descriptive, or cannot distinguish your goods/services from others.
- Relative Grounds: Your mark resembles an existing registered or pending trademark, which might confuse the public.
- Procedural Issues: The application has missing or incorrect details, such as a missing Power of Attorney or the wrong address.
Step 3: Gather Supporting Evidence
Once you receive a trademark objection, the burden lies on you, i.e., the applicant, to prove that your trademark is eligible for registration despite the objections raised by the Registrar. Your reply must be supported by solid evidence that addresses the grounds of objection. You can attach:
a. Proof of Use of the Trademark
One of the most important forms of evidence is proof that your trademark is already in use in the market. This is especially helpful in two situations:
- When the Registrar claims your mark lacks distinctiveness (under Section 9), or
- When you are claiming “prior use” to counter a conflicting mark under Section 11.
You should provide:
- Invoices and bills showing the sale of goods or services under the trademark.
- Product packaging or labels displaying the mark.
- Screenshots of your official website, ecommerce listings, or social media pages showing the mark in use.
- Marketing materials, brochures, business cards, advertisements, or banners using the trademark.
b. Proof of Distinctiveness
If the Registrar raises an objection stating that your trademark is descriptive or generic, you need to show that your mark is inherently distinctive or has acquired distinctiveness through usage. You can prove this by:
- Explaining the nature of your trademark: Argue that the mark is arbitrary (not directly connected to the product), fanciful (made-up word), or suggestive (requires imagination to connect to the product).
- Provide examples of brands in similar categories where such terms have been accepted.
- If your mark has gained recognition, submit proof that consumers associate the mark with your business- this is known as “secondary meaning.”
c. Evidence Showing No Likelihood of Confusion
In cases where the objection is based on similarity with another registered or pending mark, you must show that there is no likelihood of confusion. You can:
- Create a side-by-side comparison of your trademark and the cited mark(s), focusing on differences in:
- Appearance (logos, font style, color)
- Pronunciation (how the name is spoken)
- Concept or meaning
- Highlight how your business operates in a different class or sector, even if the names are similar.
- Show that your mark targets a different audience, or is used in a different geographic region or industry segment.
d. Corrected or Missing Documents
Some objections are simply procedural, due to missing or incorrect paperwork. These are usually the easiest to fix, but still require proper documentation. It includes:
- Missing Power of Attorney (Form TM-48)
- Incorrect classification of goods/services
- Incomplete address or applicant details
- Typographical errors
Step 4: Draft a Comprehensive Reply
Your reply to the trademark objections is crucial. It must be clear, precise, and backed by evidence. Here’s how to structure your reply:
- Introduction: Mention your trademark application details briefly and acknowledge the objections.
- Point-by-point rebuttal: Address each objection one at a time. For example:
- If the mark is descriptive, explain the reason it has gained distinctiveness.
- If there is a similar mark, compare the marks’ differences and the goods/services offered.
- Attach evidence: Reference supporting documents wherever relevant.
- Legal arguments: Cite relevant trademark law provisions and previous case rulings that support your claim.
- Conclusion: Politely request the Registrar to reconsider and allow your trademark for registration.
Step 5: Submit the Reply on Time
Submit your reply and supporting documents on the official IP India trademark portal. Ensure you meet the deadline to avoid having your application abandoned.
- Upload all documents digitally.
- Pay any applicable fees for filing the response.
- Keep acknowledgments and receipts safe for your records.
Step 6: Attend a Hearing If Required
Sometimes, the Registrar might schedule a hearing if your reply doesn’t fully satisfy the objections. Prepare by:
- Reviewing your reply and evidence thoroughly.
- Preparing to clearly explain your position verbally.
- Keep your arguments concise and to the point.
Attending the hearing increases your chances of convincing the Registrar to accept your trademark.
Step 7: Await Final Decision or Advertisement
After reviewing your reply (and hearing any comments), the Registrar will either:
- Accept your trademark for registration and publish it in the Trademark Journal (starting the opposition period), or
- Reject your application (in which case you have the right to appeal).
Conclusion
Trademark objections are a natural part of the trademark registration process in India and shouldn’t be feared. Instead, they are an opportunity to strengthen your brand’s legal foundation and clarify its distinct identity. By understanding the nature of objections and following a systematic response process that includes reading the examination report carefully, gathering evidence, drafting clear replies, and attending hearings if needed, you can successfully navigate objections and secure your trademark rights.
