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Trademark Objection – Overview
A trademark objection is a formal notification that highlights issues with the trademark application that prevent it from getting registered, either from the Trademark Registry or a third party. A trademark may be objected to under section 11 of trademarks Act of 1999 due to its identity and/or similarity with an earlier trade mark and identity and/or similarity of goods and services covered under the trademark. The objection might also occur when an examining authority, such as the Controller General of Patents Designs and Trademarks in India, identifies issues or concerns with a trademark application. This request typically seeks clarification or modification before the application can proceed.
What Constitutes a Trademark Objection?
A trademark objection occurs when a Trademark Examiner or a third party raises concerns regarding the application. This may result from non-compliance with the Trade Marks Act, 1999, such as lack of distinctiveness, similarity to an existing trademark, or procedural errors. An Examination Report or opposition notice formalises the objection.
Common Reasons for Trademark Objection
After filing a trademark application, the registry will examine it for compliance with procedural requirements. If everything is in order, an Examination Report will be issued. The report may include objections under Section 9 (Absolute Grounds) or Section 11 (Relative Grounds) of the Trademarks Act, 1999.
Absolute Grounds for Refusal (Section 9)
Under Section 9 of the Trademarks Act, 1999 absolute refusal for trademark registration is based on the inherent characteristics of the trademark. A trademark may be refused if it lacks distinctiveness or consists of marks that are customary in the trade. For instance, if a trademark is composed solely of marks or indications commonly used to describe the goods or services, it may be deemed unsuitable for registration.
Relative Grounds for Refusal (Section 11)
According to Section 11(2) of the Trademarks Act,1999 relative grounds for refusal focus on the potential impact of a new trademark on existing, well-known trademarks. These objections arise if a trademark takes unfair advantage of, or is detrimental to, the distinctiveness or reputation of an earlier, identical, or similar well known trademark in India.
Types of Trademark Objection
It is important to understand that trademark objections can arise for a variety of reasons, such as errors in the application, non-compliance with procedural requirements, or conflict with existing trademarks. Below is a description of each type of objection in more detail.
| Type of Objection | Description | Example |
|---|---|---|
| Incorrect Trademark Form | Filing the application using the wrong form for the type of filing, such as individual or company-owned. | Filing a single-class trademark using a multi-class form (Form TM-M instead of TM-A). |
| Incorrect Applicant Name | Errors or mismatches in the applicant’s name, such as spelling errors or incomplete information. | Applying under “XYZ Pvt Ltd” but the supporting documents show “XYZ Private Limited.” |
| Failure to File TM-48 | Non-submission of the TM-48 (Power of Attorney), required when filing through an agent. | A trademark attorney files the application but forgets to attach TM-48 as proof of authority. |
| Wrong Classification | Filing the trademark under an incorrect class of goods or services. | Registering software under Class 25 (Clothing) instead of Class 42 (Technology). |
| Incorrect Address | Providing an incomplete or incorrect address for the applicant or business. | Mentioning “XYZ Street” without specifying the city or pin code in the application. |
| Vague Specifications | Ambiguous or unclear description of the goods or services associated with the trademark. | Listing “consumer goods” instead of specifying “shampoos and soaps” under the trademark. |
| Identical or Similar Marks | The applied trademark is identical or deceptively similar to an already registered or pending mark. | Applying for “Coca-Kola” when “Coca-Cola” is a well-known existing trademark. |
| Lacks Distinctive Character | The trademark is not unique or fails to distinguish the applicant’s goods/services. | Applying for “Fresh Fruits” as a trademark for a fruit-selling business. |
| Deceptive or Offensive Terms | Marks that mislead the public or contain offensive, obscene, or prohibited elements. | Using “Swiss Chocolates” for goods made in India or vulgar words as part of the trademark. |
Documents Required for Filing a Trademark Objection Reply
To respond to a trademark objection, you will need to submit a well-drafted reply along with supporting documents. Below are the key documents that are typically required.
Authorization – TM-48
If the response is filed through a legal representative, a Power of Attorney (Form TM-48) must be submitted.
Examination Report of Trademark/Application Number
The Trademark Office’s Examination Report explains the objections raised. It must be carefully reviewed to ensure that each objection is addressed in a timely manner.
ID Proof
Government-issued identification of the applicant or the authorized representative, such as:
- Passport
- AADHAAR Card
- Voter ID
- Driving license
Address Proof
Proof of address for the applicant or the business, including:
- Utility bills (electricity, water, etc.)
- Bank statement
- Rental agreement or property tax receipt
Affidavit of Usage
A sworn affidavit that demonstrates that the mark has acquired goodwill and distinctiveness over a long period of time.
Proof of Evidence of a Trademark in Commercial Use
Documents demonstrating the trademark’s use in commerce, including:
- Invoices or receipts with the trademark displayed
- Marketing materials, such as brochures, advertisements, or posters
- Website screenshots or social media profiles featuring the trademark
- Photographs of the product packaging or labels containing the trademark
Process of Filing the Trademark Objection Reply
The following is an overview of the steps involved in responding to a trademark objection in order to ensure compliance with legal guidelines.
Step 1: Analysing Trademark Objection
- To understand the objections, review the Examination Report
- Organise objections by absolute grounds, relative grounds, or procedural grounds
- Respond effectively with evidence and legal arguments
Step 2: Responding to Trademark Objection
- Provide a detailed reply to each objection
- Documents to support:
1. Affidavit of usage
2. Proof of prior use
3. Supporting distinctiveness evidence - If applicable, refer to the Trade Marks Act, 1999.
Step 3: Trademark Hearing
- The Registrar may schedule a hearing if the reply is not sufficient
- Attend the hearing in person or through a trademark attorney
- Support the trademark’s registration eligibility with arguments and evidence
- Respond to any further queries raised during the Trademark hearing.
Step 4: Publication in a Trademark Journal
- If the Registrar is satisfied with the reply and/or hearing, the trademark is accepted and published in the Trademark Journal
- Publication allows the public and third parties to review the trademark application and file an opposition within the statutory period (typically 4 months).
Step 5: Registration
- If no opposition is filed within the stipulated time or if the opposition is successfully resolved, the trademark proceeds to registration
- The Registrar issues the Trademark Registration Certificate, granting the applicant exclusive rights over the mark.
Trademark Objection Reply Fees
The trademark objection response prices start from ₹399*. The price varies as per the complexity and nature of the process and is subject to change. Get in touch with our IP lawyers to get a clear outline of the prices involved.
What Happens if You Don’t Respond to a Trademark Objection?
If you fail to respond to a trademark objection within the specified timeframe, your trademark application will likely be considered abandoned. This means you will lose your priority date and may need to refile the application to register your mark, essentially denying your attempt to register the trademark.
Perform Right Trademark Search
Reduce the chance of trademark objection by performing a comprehensive trademark search. This ensures that your trademark is unique and not already in use by another business. A thorough trademark search helps avoid potential legal disputes and increases the chances of your trademark being approved. Use VakilSearch’s trademark search tool to check if your desired trademark is already in use and avoid potential conflicts or objections.
Differences Between Trademark Objection and Trademark Opposition
| Particulars | Trademark Objection | Trademark Opposition |
|---|---|---|
| Stage of Initiation | Initiated immediately after submission of the trademark registration application at the initial stages of registration. | Comes after the stage of trademark objection. |
| Persons Initiating | Raised by the trademark examiner in the registration process. | Any third party can raise an opposition against the trademark. |
| Form of Initiation | Filed by the examiner in the form of a trademark examination report. | Filed by a third party in the form of a notice of opposition. |
| Form of Submission | The trademark examiner submits the objection in the trademark examination report, which can be viewed online. | The third party submits the notice of opposition with evidence and reasons for the opposition. |
| Reply for Initiation | Applicants must respond within one month of receiving the examination report. | Applicants must reply within two months of receiving the notice of opposition. |
| Appeal | Applicants can file an appeal if the application is rejected after replying to the objection. | Appeal can be filed against the registrar’s judgment in the opposition case. |
| Fees | No fee required for replying to a trademark objection. | Applicants must pay prescribed fees when replying to the opposition notice. |
| Finality of Process | When the trademark is accepted after the objection process, it is published in the trademark journal. | When the trademark is accepted after the opposition process, the judgment is communicated to both the applicant and the third party. |
