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How to Respond When Trademark Gets Objected?

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Last Updated on June 19, 2024 by Swetha LLM

Trademarks are incredibly important resources in today’s highly competitive commercial world. They establish the company’s brand identity and formally safeguard its intellectual property. It’s not always a simple process to register a trademark, anyway. Among the main concerns is handling objections to trademark filings. Understanding these objections and knowing how to respond to them is critical for maintaining brand protection. This blog post aims to assist you in addressing trademark objections and crafting intelligent retorts.

What is an Objection to a Trademark?

When concerns are voiced by government trademark authority or issues with a suggested trademark’s registration, it becomes a trademark objection. Usually, the applicant receives this objection through an official document called an “office action” or “trademark examination report.” An objection indicates to the applicant any possible issues or shortcomings in their application that need to be resolved before the trademark may be registered.

Eligibility for Trademark Objection

The Trade Marks Act of 1999, namely sections 9 and 11, outlines the absolute and relative grounds for which the trademark examiner may use to file an objection.

Absolute Grounds

  • There is nothing about the trademark that makes it stand out.
  • The trademark tells the quality of the product it represents.
  • The trademark is offensive to specific communities due to deliberate or mistaken intention.

Relative Grounds

  • The public may become confused by the trademark.

Following are Causes for Raising a Trademark Objection

  • Using the incorrect trademark application.
  • The trademark application has an inaccurate name.
  • Trademark form TM-48 not being filed.
  • Trademark application with the wrong address.
  • Uncertainty in the goods or services mentioned.
  • Existing trademarks that are similar or equivalent.
  • Trademark is not very unique.
  • The trademark is deceptive.

Benefits of Trademark Objection Response

  • You must stop letting your trademark lapse: Responding to a trademark objection has various advantages, the most important of which is its ability to refute arguments made against your application for trademark registration.
  • Assess the distinctiveness of your brand: You can speed up the trademark registration process by reducing the chance of trademark objections based on variables like exclusive ownership and distinctiveness of your brand by providing enough evidence to support your claims.

How to Respond Against Trademark Objection?

The following are some things to think about while answering a trademark objection:

  • To ensure that the applicant’s response to the objections is unequivocal, they must carefully evaluate and understand them.
  • The applicant must provide a response to the objection.
  • You must prepare a suitable answer and any required laws, rules, regulations, and documentation.
  • To ensure a proper response, you can obtain support from an IPR advisor or lawyer.
  • Such a reply should be submitted using the Trademark e-filing portal along with any supporting laws, rules, and documentation.

Documentation Required

It is necessary to provide a formal response to the examination report that explains in great detail why the application should be approved. You must have the aforementioned documentation.

  • Power of Attorney
  • Reply to a report on an examination.
  • Invoices, letterheads, letters, visiting cards, screenshots of websites, brochures, and other trademark-related materials are examples of evidence of using trademarks for business purposes.

The Trademark Objection Procedure

The procedure for filing a trademark objection in India entails the following steps:

1. Notice of Trademark Objections

A notice objection to a trademark advertisement may be submitted within four months to the trademark journal from the date of the advertisement. It is advisable that you follow the deadline if you want to protect your rights to your trademark.

2. Counter-Statement

The applicant has two months from the date of receiving the notice of trademark objection to the marks they are requesting registration for to submit a counterstatement. If not, it seems that the applicant has given up on the trademark application; thus, submit a timely counterstatement.

3. Proof to Support the Rejection

The burden of providing evidence for the assertion is with the person voicing the objection. Evidence for the objection to the trademark that is being filed can be found in an affidavit that the applicant has supplied. If the applicant lacks supporting documentation, they might possibly write to the Registrar noting that they plan to rely only on the information provided in the notice of objection instead of offering any supporting data.

4. Proof ought to be supplied in Favor of the Reply

The opposing party has one month, with the option to extend it for another month, to provide supporting documentation in response to the applicant’s evidence.

5. Final Hearing

The Registrar will schedule the hearing based on the above-mentioned elements in addition to the evidence that has been produced and filed. In order to appear in the action, the parties must notify the Registrar within 14 days of the day they received the notice of hearing. As a result, the trademark registrar will hear the matter and decide on its merits.

6. Final Verdict

The Registrar ultimately renders the ruling following the hearing on the case. If the applicant wins, the application is registered in accordance with the Trademark Registration Act. But, in the instance that the applicant loses, the Registrar will take these into account trademarks to be objected to.

Time Frame for Objection

A third party may register a trademark objection three months after the day the trademarks they are objecting to were published, a period that may be extended by another month. Sometimes, waiting can be detrimental. Therefore, submit a trademark objection against any application right away, if at all possible. It is not advisable to take a potential since the authorities might perhaps grant an extension in some circumstances but not in others. The authorized person will always make a request for justification for the delay; if they are satisfied with your explanation, they may extend; if not, they may not. To put it briefly, they have the discretionary right to grant an extension of time, or they will not.

Drawbacks of Not Submitting a Response

A critical step in trademark registration, fast response to trademark oppositions is required. If the response to the examination report is not submitted within 30 days of notice or by the extended deadline, the trademark application will be considered abandoned. Reapplying is necessary if the application has been marked as not being used. Make sure, though, that you consult legal expert.

Difference between Opposition and Objection

The main difference between opposition and trademark objection is that the former is brought up by the examiner following application filing, during the first phases of registering a trademark. However, anyone who objects to a trademark filed after it has been advertised for four months in the Trademarks Journal may file a trademark opposition.

Conclusion

In trademark registration, handling objections is crucial. When the trademark office raises concerns, applicants must craft a detailed response. Understanding the objections, collecting evidence, and putting up a well-organized response is crucial to overcoming these hurdles. Following the established protocols in India enhances the likelihood of resolving examiner issues effectively. Thoroughness, attention to detail, and possibly consulting a specialist are key to formulating a robust and legally sound response.

FAQs

1. What do you mean by Trademark Objection?

Once filed, the examiner must thoroughly examine a trademark application. The trademark examiner has the option to reject the filed application for trademark registration. The term “trademark objection” refers to this refusal.

2. In the Register of Trademarks, who does not object?

After reviewing the application, the examiner for trademark registration has the option to reject it.

3. How do I check trademark objections?

A trademark search on its brand logo may be performed by the applicant before submitting an application for trademark registration. If the applicant needs to, they can use the search to alter the logo in order to prevent objections when the examiner reviews their application.

4. What occurs if the reply to the trademark objection is not accepted?

The trademark is published if the response is approved. Otherwise, there’s an issue with hearing. Thus, in order to avoid wasting your trademark registration efforts, you must file a compelling rebuttal in response to a trademark objection submission.

5. Where can I find experts in trademarks to assist me in answering an objection to a trademark?

Kanakkupillai is a group of experts made up of the best trademark lawyers. They formulate the best answer in order to handle the trademark objection.

Swetha LLM

Swetha, LLM, a lawyer with skills in writing legal content, is passionate about simplifying complex legal concepts and engaging readers with her insights of nuanced legal ideas. She is able to preserve the accuracy of legal material while adjusting the tone and style to fit the audience.