Trademark Objection- Initial Stage To Check Registration

Trademark objection is one of the initial stages in the trademark registration application process. It is not an outright rejection; instead, the trademark registrar looks for a valid reason or explanation for the mark and registration. The applicant is allowed to explain how the trademark fits the criteria to benefit from valid registration.

In this case, the comprehensive reply must be filed within one month from the date of the issue of objection. There are many reasons for the objection to trademarks such as similarity to existing trademarks, offensive trademarks, absence of distinctiveness, etc. Often, during the trademark registration process, the registrar objects to the applied trademark if it violates trademark registration rules and laws. 

Trademark registration creates a brand identity and differentiates it from other services or products available in the market. Protecting a trademark is very important if one wants to retain its distinct identity. But there are cases when someone will prevent you from asserting your right. Therefore, you need to understand the whole objection concept.

Trademark Objection Reasons For Logo Registration Services

Here you will find the reasons of Trademark Objections which help you to give all the protective factor for your business registration online. It includes:

• Using Incorrect Trademark Form

If the trademark application is not in the correct form, the trademark examiner will object as a certification mark in respect of goods or services falling within the class, The application is made on Form TM-1. The application should be corrected as Form TM-4 by filing a request on Form TM-16.

Corrective Action

The applicant can overcome this objection by filing a request on Form TM-16 requesting to correct the trademark application.

• Incorrect Trademark Applicant Name

The trademark applicant's name must be correctly entered in the application as suggested in this article. In case of an incorrect trademark applicant's name, the trademark examiner will file an objection as the application of the partnership firm, the names of all the partners of the firm should be on record by filing Application Form TM-16.

Corrective Action

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

• 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 the application is submitted by another person instead of the applicant, and a power of attorney must be filed in favor of a particular 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.

• 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 the principal place of business of the applicant should be brought on record by filing a request on Form TM-16 or The address of the applicant for service in India should be brought on record by filing a request on Form TM-16, as the applicant has no principal place of business in India.

Corrective Action

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

• Vague details of goods or services

There are so many reasons for trademark objection. In a trademark application, if the specification of the goods or services is too vague or the class covers a large number of goods and services, the trademark examiner may object as all the details of goods/services mentioned in respect of class xx is very vague and wide. You should file a request in Form TM-16 providing the exact items in respect of the trademark you wish to register.

Corrective Action

The applicant can overcome the objection to the specification of goods or services by filing a request in Form TM-16 requesting for rectification of the trademark application.

• Same or similar trademark exists

If in respect of the same or similar description of goods or services, the same or similar earlier trademark of a different trademark owner is found on record, an objection is raised as if the same or similar marks are on record, description of the goods or services and such identity or similarity of the marks and the goods or services is likely to confuse the part of the public that’s why The trademark applied for registration is not registrable under Section 11(1) of the Trade Marks Act, 1999.

Corrective Action

 The applicant may submit a reply to the trademark examination report stating that the trademarks cited as conflicting marks in the examination report are different from the applicant's trademark with supporting evidence.

• A trademark has no distinctive character

Trademarks that are not capable of distinguishing the goods/services of one person from the goods of another are devoid of distinctive character and are therefore liable to be opposed on the absolute ground of rejection of the trademark. To overcome a trademark objection with absolute grounds for refusal, a trademark applicant may submit evidence to show that the mark has acquired a specific character due to its prior use.

• Trademark is Deceptive

An objection may be raised by the examiner of a trademark if the mark itself or the goods or services in which it is used is likely to deceive the public due to underlying reasons such as nature, quality, or geographical origin. A fraudulent objection can be overcome if the applicant tries to exclude goods or services by filing Form TM-16.

How to Reply Trademark Objection?

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 has 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 condo nation 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).
• Applicant must verify all documents
• Thereafter the Deputy Registrar shall approve each application on the date on which the application is submitted
• If the Deputy Registrar finds any defect in the application, he will notice the same
• The defect must be fixed and the applicant must resubmit the application within 2 months.
• Failure to do so, in the Deputy Registrar will treat the application as abandoned
• If the application is found to be out of order, the Deputy Registrar will record the case and assign a serial number to it.
• To write the reply you can get the trademark objection reply sample PDF on the internet also.

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

The IPAB will decide the case based on the submissions made by both parties.

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 previous 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.

How To Check Trademark Objection?

Here are the steps that give you complete details about different steps to check trademark objection are as follows:

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: Click on the first option titled Trademark Application / Registered Mark. Enter your trademark application number and your complete trademark application will be displayed with its current status.

Step 6: Check if it has been 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.

Online Trademark Objection Process

To initiate trademark opposition proceedings, a notice of trademark opposition may be served on any person within four months from the date of advertisement or re-advertisement of the application in the Trademark Journal. Trademark opposition must be in the prescribed form on Trademark Form 5 and must be filed along with the applicable fee. A trademark opposition notice should contain the following information:

• The application against which the trademark opposition is filed, including the trademark registration application number, the class of goods or services for which the trademark registration was applied, and the name of the applicant for the trademark application.
• Details of trademark opposing party including name and address.
• Grounds for trademark opposition.

You can get the reply to trademark objection format on the internet.

Procedure Of Checking Trademark Objection Status

After the trademark opposition notice is filed with the trademark registrar, the registrar will provide a copy of the trademark opposition notice to the trademark applicant. Within two months of receiving the trademark opposition notice, the trademark applicant must file a counter statement. If the trademark applicant fails to file a counter statement within the prescribed period, the trademark application will be deemed to be "abandoned". To learn more about trademark application status, see "Understanding Trademark Registration Status."

Based on the opposition to the trademark and the counter-examination filed, the Registrar may call for a hearing of the parties. The Registrar then has the option of filing a trademark opposition based on the trademark registration application and the evidence submitted.

Trademark objection under section 11 is 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.