Trademark Objection in India – an Overview

Trademarks are vital business assets, but securing them can be challenging. Many applications are rejected annually due to potential conflicts with existing trademarks. Examiners compare against databases of registered trademarks to identify identical or confusingly similar marks. They summarise their findings and reasons for objection in a trademark examination report. This process safeguards existing trademarks and prevents consumer confusion.

What is Trademark Objection

A trademark objection in India occurs when the Trademark Registry raises concerns about a trademark application, preventing its immediate registration. This typically happens because the mark has potential to

• infringe upon an existing registered trademark, meaning it’s too similar and could cause confusion among consumers, or
• violate one of the absolute grounds for refusal outlined in the Trade Marks Act, 1999. These grounds include:
• Lack of distinctiveness (generic or descriptive words)
• Deceptiveness (misleading about the product or service)
• Similarity to prohibited emblems or names
• Immorality or scandal

When an examiner identifies such issues, they issue an Examination Report detailing the reason(s) for objection.

The applicant then has a specific timeframe, usually 4 months for ordinary applications and 3 months for fast-track applications, to file a reply addressing the objections. This reply can involve:

• Providing arguments and evidence to defend the distinctiveness of the mark
• Modifying the application to differentiate the mark from existing ones
• Abandoning the application if further prosecution seems unlikely

The Trademark Registry then reviews the reply and decides whether to accept the application, issue further objections, or schedule a hearing. Ultimately, the goal of the objection process is to ensure that registered trademarks are genuinely distinctive and don’t mislead consumers, protecting both existing businesses and the public.

Trademark Examination Report

A trademark examination report is a document issued by the trademark office that analyzes a trademark application and determines whether it meets the requirements for registration. The report will identify any potential objections to registration and will provide the applicant with an opportunity to respond to those objections.

The trademark examination report will typically include the following information:

• The name of the applicant
• The trademark that is being applied for
• The goods or services that the trademark will be used for
• The results of the trademark search
• Any potential objections to registration
• The applicant’s response to the objections
• The trademark office’s decision on whether to register the trademark

If the trademark office does not raise any objections, the trademark will be registered. However, if the trademark office raises objections, the applicant will have an opportunity to respond to those objections. If the applicant is unable to overcome the objections, the trademark will be rejected.

Reasons for Trademark Objection in India

Trademark objections in India can occur for various reasons, and the Registrar of Trademarks may issue an objection notice during the trademark registration process. Some common reasons for trademark objection in India include:

1. Similarity to Existing Marks: If the proposed trademark is too similar to an existing registered trademark or pending application, it can lead to an objection. The Registrar may consider it likely to cause confusion among consumers.

2. Descriptive or Generic Terms: Trademarks that describe the goods or services they represent or use generic terms are often objected to because they lack distinctiveness.

3. Offensive or Immoral Content: Trademarks that contain offensive, immoral, or scandalous content may be objected to on moral or public order grounds.

4. Deceptive Marks: If a trademark is likely to deceive the public regarding the nature, quality, or origin of goods or services, it can be objected to.

5. Geographical Indications: Trademarks that falsely suggest a geographical origin of goods or services can face objections, as they may mislead consumers.

6. Well-Known Trademarks: If a trademark is identical or similar to a well-known trademark, it can be objected to to protect the rights of the well-known trademark owner.

7. Non-Distinctive or Non-Unique Designs: Trademarks that consist of common shapes, symbols, or designs may be objected to if they lack distinctiveness.

8. Improper Use of National Symbols: Using national symbols, emblems, or flags in a trademark without proper authorization can lead to objections.

9. Errors in Application: Technical errors, missing documents, or incomplete information in the trademark application can result in objections.

10. Inadequate Specification of Goods/Services: A lack of clarity or specificity in the description of goods or services associated with the trademark can lead to objections.

Documents Required For Trademark Objection

The following documentation is needed for trademark objection process:

• Report on authorised document
• Trademark examination report
• Identification documentation
• Process for address verification in trademark opposition

Process for Trademark Objection Reply

• Follow the progress of your trademark application
• Look into the trademark complaint
• File a trademark objection reply
• Review and double-check the response before filing
• Obtain commentary on the department’s response
• If your response is positive, your trademark will be published in the trademark journal
• As an applicant it is mandatory to appear during the hearing of The trademark.

How to File Trademark Objection Reply

It is mandatory to file a Trademark objection reply to the authorities within the given time frame. AccountWaale can tackle the Trademark objection process easily without any hassles. As soon as you receive a Trademark objection notice read it thoroughly to analyse the grounds of objection.

• The first and foremost step is to file counter statement to the trademark objection process within a span of 2 months from receiving the notice
• The registrar will file for a hearing after receiving the Trademark objection reply
• Substantiate your trademark objection by furnishing supporting documents as evidence, validating your claim and reinforcing your position effectively.
• Despite providing the documents if the registrar rules in favor of the opposing party you can appeal to the Intellectual Property Appellate Board (IPAB)
• The counter has to be filed within 3 months from the date of passing the order
• In case of any delays the applicant should explain the reason along with the fine of ₹2500
• If the reason is acceptable the IPAB will fix the date for hearing
• The trademark objection reply filing process must be carried out in accordance with the IPAB’s rules and regulations
• All the documentation has to be verified, all the application has to be endorsed by the deputy registrar
• If the deputy registrar finds any defects with the application a notice will be provided
• The corresponding changes have to be completed and submitted within 2 months
• In case of any delays the trafemark objection application will be abandoned
• Based on the provided documentation the IPAB will decide the trademark objection case.

Timelines for Filing Reply to Examination Report

The timeline for filing a reply to an Examination Report in India depends on the type of trademark application and the specific grounds for objection raised by the examiner. Here’s a breakdown:

For Ordinary Applications:

• 4 months: This is the standard timeframe for filing a reply to an Examination Report for an ordinary trademark application. This period starts from the date of receiving the report.
• Extension of time: If you need more time to prepare your reply, you can request an extension of up to 30 days from the Controller of Trademarks. You can file a request for extension along with the prescribed fee before the deadline expires.

For Fast-Track Applications:

• 3 months: For fast-track applications, the deadline to file a reply is shorter at 3 months from the date of receiving the Examination Report. This is because fast-track applications are prioritized for processing.
• Extension of time: Similar to ordinary applications, you can request an extension of up to 30 days for filing your reply.

Consequences of not filing a reply within the deadline:

• Abandonment of application: If you fail to file a reply within the stipulated timeframe, your trademark application will be deemed abandoned. This means you will lose your priority date and will have to file a new application if you still want to register the trademark.
• Loss of opportunity to address objections: Failing to file a reply also means you forfeit the chance to address the examiner’s concerns and potentially overcome the objections raised. This could significantly delay or even prevent the registration of your trademark.

Extension of Time To File Objection Reply

The extension of time will be granted for a maximum of 30 days.

To request an extension of time, you must file a written request with the trademark office. The request must include the following information:

• The name of the applicant
• The trademark application number
• The reason for the request
• The date by which you would like to file the reply

The trademark office will review your request and make a decision on whether to grant the extension.

Purpose Behind Trademark Objections

Trademark objections serve several crucial purposes, primarily aimed at protecting consumers and maintaining the integrity of the trademark system:

1. Preventing Consumer Confusion:The core purpose of a trademark is to identify and distinguish the goods or services of one business from those of another. Objections are raised when a proposed trademark is deemed too similar to an existing one, increasing the likelihood of consumers mistakenly associating the new mark with the wrong business. This confusion can harm both businesses and consumers, leading to potential financial losses and reputational damage.

2. Protecting Existing Trademarks:Trademark registration grants the owner exclusive rights to use the mark within a specific class of goods or services. Objections ensure that new trademarks don’t infringe upon existing rights, preventing dilution of the distinctiveness and value of the earlier mark. This protects established businesses from unfair competition and preserves the integrity of the trademark system.

3. Maintaining Trademark Quality: Trademarks must be distinctive and not generic or descriptive of the goods or services they represent. Objections prevent the registration of marks that lack distinctiveness, ensuring that only marks capable of effectively identifying and differentiating a business are granted protection. This maintains the overall quality and functionality of the trademark system

4. Ensuring Fair Competition: By preventing the registration of infringing or confusing trademarks, objections contribute to a level playing field for businesses. This encourages healthy competition and protects businesses from unfair advantages based on misleading or deceptive trademarks.

5. Promoting Transparency and Efficiency: The objection process provides applicants with a clear understanding of why their trademark might not be registered. This allows them to address the concerns raised, either by modifying the mark or withdrawing the application, leading to a more efficient and transparent system.

Eligibility Criteria for Trademark Objection

The following are some of the common eligibility criteria for trademark objection in India:

• Similarity: The trademark in question must be similar or identical to an existing trademark in the same class or category of goods or services.
• Confusion: The use of the trademark in question could cause confusion among consumers or could lead to mistaken identity with an existing trademark.
• Descriptiveness: The trademark in question is descriptive of the goods or services being offered, and therefore not eligible for trademark protection.
• Offensive: The trademark in question is offensive or derogatory to a particular community or group of people.
• Deceptive: The trademark in question is misleading or deceptive, leading to a false impression about the quality, origin, or source of the goods or services.

Consequences of Non-filing of Reply

The consequences of non-filing of reply to an examination report in India are as follows:

• The trademark application will be deemed to have been abandoned.
• You will not be able to register the trademark.
• You will not be able to use the trademark as a registered trademark.
• You will be unable to prevent others from using the trademark.

If you fail to file a reply to an examination report, you can still file a new trademark application for the same trademark. However, you will need to address the objections raised in the examination report in the new application.

Respond to Trademark Objection Raised

If you receive an trademark objection for your trademark application, you can respond to it by following these steps:

• Review the Objection Notice: Carefully read and understand the grounds on which the objection has been raised. Identify the areas where your trademark application is lacking and where improvements can be made.
• Collect Evidence: Collect all the relevant evidence, documents, and facts that support your trademark application. You can provide evidence such as prior usage, distinctive character, and other relevant information.
• Prepare a Response: Prepare a written response to the trademark objection, addressing all the issues raised in the objection notice. Explain how your trademark application meets all the legal requirements and how it does not infringe upon the rights of any other registered or pending trademarks.
• Submit the Response: File the response with the trademark office within the specified time limit, which is usually one month from the date of receipt of the objection notice. If you fail to respond within the stipulated time frame, your application may be abandoned.
• Follow up: After submitting your response, keep track of any further communications from the trademark office. Be prepared to provide additional information or make further modifications if necessary.

Why is a Trademark Objection Reply Necessary?

A trademark objection reply is necessary to address the concerns raised by the trademark examiner regarding the registration of your trademark. The examiner may object to your trademark application for a variety of reasons, such as:

• The trademark is confusingly similar to another registered trademark.
• The trademark is descriptive of the goods or services it is being used for.
• The trademark is generic, meaning that it refers to the general class of goods or services.
• The trademark is offensive or scandalous.
• The trademark is a famous trademark that is being used in bad faith.

If you receive an objection to your trademark application, you will have an opportunity to file a reply to the objection. Your reply should address the specific concerns raised by the examiner and explain why your trademark should be registered.

What to Do After Filing Trademark Objection?

After filing a trademark objection, the next steps are to:

• Wait for the trademark office’s decision: The trademark office will review your reply and make a decision on whether to register the trademark. This process can take several months.
• Consult with an attorney: An attorney can help you understand the trademark office’s decision and advise you on your options.
• File an appeal: If you are not satisfied with the trademark office’s decision, you can file an appeal with the Intellectual Property Appellate Board.
• File a new trademark application: If you are unsuccessful in registering your trademark, you can file a new trademark application for the same trademark. However, you will need to address the objections raised in the examination report in the new application.

Why AccountsWaale?

AccountsWaale has the best attorneys to complete the whole process without any delay. We can tackle the trademark objection process in India in just a few clicks. Our In-house trademark experts can finish all the formalities without any hassles. Reach out to us through our websites and get your process kickstarted.