Trademark Objection

Trademark objection is a process that can be done for several reasons after registering a trademark of any company. Once a trademark application is filed, the trademark examiner examines the application and looks for prior trademarks - those that are identical or similar to the mark being examined

The findings of the trademark examiner are compiled as a trademark examination report. Companies and enterprises identify their products as their own by using logos, designs, or a specific set of words that are unique and distinct.

These designs or words help make it easy for consumers to identify the brand, quality, and origin of the product. Hence the marks used by these companies in the course of their trade are known as trademarks.

In India, trademarks are recognized as intellectual property and are therefore protected from infringement under the applicable law.

Meaning of Trademark Objection

This is one of the early stages in the trademark registration process where the trademark examiner objects to your application for several reasons. This is not an outright rejection of your claim, but the registrar looks for valid reasons or explanations for the mark and its registration. It allows the applicant to explain how he fits the criteria to obtain a valid registration.

The Trade Marks Act, of 1999 regulates the laws of trademarks including registration, protection, and penalties. This protection is for the company as well as the consumer also. Registration of a trademark under the Act is for 10 years and can be renewed for another 10 years on timely payment of the renewal fee.

Registration Process of Trademark Registration Application

The procedure for the registration of trademarks is prescribed under Section 18 of the Act. Once you apply to register a trademark, it can take one to two years for it to be registered. The process is as follows;

• First, the symbol will go to the Vienna Codification.
• They will then check the formalities to see if the application has been filed with all the required documents.
• Further, it will be marked for examination. This means it will be sent to an examiner who will check the marks for any violation of the provisions of the Act.
• If no problem is found then a test report will be issued.
• The mark will be published in the official gazette, the Trademark Journal after the examination report is submitted.
• A window of 3 months upon publication in the Journal, which may be extended for an additional month, shall be open to the public or third parties to object to the registration of the trademark.
• If there is no objection, the trademark will be registered and a certificate of registration will be issued to the applicant and will be protected for ten years from the date of filing of the application.

Reasons for Trademark Objection

These are the objection of trademark reasons for the objection to the trademark;

1. Use of Incorrect Trademark Forms

If the trademark application is not in the correct form, the following objections are raised by the trademark examiner.

An application is made in Form TM-1, for a certification mark in respect of goods or services falling within the class, the application should be corrected as Form TM-4 by filing a request in Form TM-16.

Corrective Action : The applicant can overcome this objection by filing a request in Form TM-16 requesting rectification of the trademark application.

For this matter sending a reply is very important. Therefore, you can get a trademark objection reply sample pdf for help from the internet to reply to the objection of the trademark.

2. Incorrect Trademark Applicant Name

The trademark applicant's name must be correctly entered in the application. In case of an incorrect trademark applicant's name, the trademark examiner will file an objection as follows:

Since the application appears to be filed in the name of the partnership firm, the names of all the partners of the firm should be brought on record by filing Application Form TM-16

Corrective Action: The applicant can overcome the objection to the incorrect trademark applicant's name by filing a request in Form TM-16 requesting correction of the trademark application.

3. Failure to File Trademark Form TM-48

Trademark Form TM-48 must be attached whenever a trademark application is filed by a trademark attorney or trademark agent on behalf of the applicant. If Form TM-48 is not attached or is incorrectly executed, the Trademark Examiner will raise an object as follows:

If the application is submitted by a person other than the applicant, a power of attorney must be filed in favor of a specific agent.

Corrective Action: An applicant can overcome a failure in Form TM-48 or a request to correct the trademark application by filing a request on incorrect Form TM-16.

4. Wrong Address on the Trademark Application

If the trademark application does not mention the applicant's principal place of business or the applicant's address for service in India, an objection can be raised as follows:

The principal place of business of the applicant should be brought on record by filing a request on Form TM-16 or The applicant's address for service in India have to be brought on record by filing a request on Form TM-16 if the applicant has no principal place of business in India.

Corrective Action: The applicant can overcome the objection regarding the incorrect address by filing a request in Form TM-16 requesting rectification of the trademark application.

Requirement of Reply to Trademarks Objection

The most important question that arises, in the beginning, is, How to reply trademark objection? So, let's have a look at its solution;

Once the objection is filed, the applicant will be given proper notice of the objection as well as the reason for the objection.

• The first thing is to file a counter statement for objection.
• This must be done within 2 months of receiving the notice of objection
• Failure to file an objection within 2 months will result in abandonment of application status.

Once the counter is filed, the registrar can call for a hearing and if they decide in favor of the applicant, the trademark will be registered. If he decides in favor of the opposition, the trademark will be removed from the journal and the application for registration will be rejected. At this point, the applicant can file an appeal with the Intellectual Property Appellate Board (IPAB):

• The appeal is necessary to file within 3 months from the date of the order passed by the Registrar.
• If an appeal is filed after 3 months, the applicant must state the reason for the delay by filing a petition for condonation of delay along with a penalty of Rs 2,500. If the IPAB admits the cause, the appeal will be posted for hearing.
• The filing must be made following the rules prescribed in the Trademark (Applications, Appeals, and Fees to the Intellectual Property Appellate Board) Rules (hereinafter referred to as the Trademark Rules).

IPAB will hear the case after registering the case. According to Rule 2(m), the place of the hearing shall be determined by the jurisdiction in which the case falls. A date will be given for hearing the case. A hearing will be held accordingly.

1. The IPAB will decide the case based on the submissions made by both parties.
2. If a party fails to present itself on the day of the hearing, the IPAB may:

• Rules on merits of the suit
• Make an ex parte order (in the absence of a party)
• Dismiss the case

If the case is dismissed or decreed, a period of 30 days from the date of judgment is given to file a petition against the earlier order. The matter will be heard and the order passed by the IPAB will stand. If the applicant is aggrieved by the order passed by the IPAB, he still has the option of filing an appeal before the High Court having competent jurisdiction. A subsequent appeal can also be filed in the Supreme Court of India.

Checking Procedure of Trademarks Objection

Step 1 : Visit www.ipindia.nic.in.

Step 2 : Click on the trademark bar available on the page.

Step 3 : Click on the relevant link bar present under the dropdown menu that appears.

Step 4 : Click on Trademark Status.

Step 5 : After you click on the trademark status its page will appear. Click on the first option titled Trademark Application / Registered Mark.

To check the status of the registration of copyright the following procedure is required;

Step 6 : If objected to, this status will appear on the top left side of the application

Step 7 : Download the exam report through the link on the top right side of the mark.

Details of Trademark Objection Process

Listed below are the procedures for objection trademark;

File the Reply

The applicant has an opportunity to be heard. However, the applicant must submit a reply to the objection raised. However, filing a response does not guarantee that the registration of the trademark will be granted.

Check Your Objection Status

It is very important to check the status of the trademark application and take the necessary steps in between. You have to file a reply to the trademark objection within one month as soon as you receive the information on it.

Publication in Journal

Here we are talking about the Trademark Journal, which is the official gazette of trademark registration. It publishes the status of each objection, withdrawal, or application. If the examiner finds that the answer to the objections is sufficient and all parties concerned agree to it, the trademark examination report will be advertised in the trademark journal. When the application is published, the third party has the opportunity to oppose the registration of the mark

How to Reply to the Exam Report

To help with the drafting of the notice, you can get the sample reply to trademark objection format on the internet also.Once you receive the report, you will need to provide reasons to show that your trademark meets the requirements to qualify as a valid registrable trademark. You must file this within 30 days; otherwise, the trademark is of no use.

Fees and Charges

The fee ultimately depends on the level of objection and the nature of the objection. However, the process of filing an objection requires thorough study and research. It is advisable to seek professional help while submitting a reply to an objection.

Trademark Objection Under Section 11 of the Trademark Act 1999

Section 11 objections are treated as relative grounds for refusal, under which the primary ground for refusal is that the applicant's mark is similar to a registered mark relating to similar goods and services. Section 11 objections are not absolute.

If the registrar points out that the mark is similar to a mark that has already obtained registered status, the applicant can show that their marks are different in nature, form, and goods or services. Once the registrar is satisfied that the mark is different from a pre-existing one, the mark is accepted and advertised.

There are several ways in which a person can establish that his mark is distinct from marks already existing in the market.

Here is the answer to the trademark objection: how does it proceed?

• Establish a certain amount of goodwill.
• Try and prove that the trademark has a secondary meaning
• Install any color difference.
• Read your sign completely.
• Claim usage over some time.
• Prove the distinctiveness of the mark by the difference in shape or device.

It may be noted that objections raised by the Registrar must be answered within 30 days from the date of receipt of the examination report.