Trademark Objection Reply Filing
A trademark objection occurs when the Trademark Registrar raises concerns about a trademark application, often due to similarities with existing trademarks or issues related to distinctiveness. Respond to your trademark objection with confidence. Schedule a consultation with our trademark attorneys today.
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Trademark Objection Reply Filing - Overview
Once Trademark get filed Registrar will examine filed trademark application & issue Examination report within 45-60 day. The registrar will decide whether the application can be accepted or not. If nor accepted, the registrar will mark the application as objected with specific reasons. The examination report will be communicated to applicant / trademark agent for submitting a reply to the examination report.
Common Reasons for Trademark Objections
- Similarity to Existing Marks: Objections may arise if the proposed trademark is deemed too similar to an existing registered trademark.
- Descriptiveness: If the trademark is found to be descriptive or generic, it may face objections under Section 9 of the Trademark Act.
- Deceptive Terms: Trademarks that mislead consumers or contain offensive terms may also be rejected.
Steps to Respond to a Trademark Objection
1. Analyze the Objection
Carefully review the objection to understand the specific concerns raised. This analysis is vital for crafting a precise and relevant response.
2. Drafting the Response
The response should include:
- Direct Answers: Address each point raised in the objection with clear, concise answers.
- Supporting Evidence: Provide legal precedents, rules, and judgments that support your case.
- Comparison with Conflicting Marks: Highlight the differences between your trademark and any cited conflicting marks.
- Affidavit of Use: Include an affidavit detailing the trademark’s usage across platforms such as websites and social media, along with supporting documentation.
3. Filing the Response
Submit the drafted response through the Trademark e-filing portal within the stipulated timeframe, typically one month from receiving the objection notice.
4. Hearing Process
If the response is accepted, the application will proceed. If not, a hearing may be scheduled where further arguments can be presented.
5.Publication in the Trademark Journal
Upon acceptance, the trademark will be published in the Trademark Journal, allowing for a four-month period during which third-party oppositions can be filed.
Trademark Objection - Reason
The following are the major reasons marking the application as objected by the Registrar if Trademark:
1. If the trademark does not have distinctive character or not capable of distinguishing the goods or services.
2. If the trademark applied for registration is similar to the marks already registered/applied.
The grounds of refusal of TM application can be divided into two parts:
A. Absolute Grounds of Refusal : Section 9(1) to (3) of Trade Marks Act, 1999
Section 9(1) prohibits the registration of those trademarks:
- Which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person
- Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services; or
- Which consist exclusively of marks or indications which have become customary in the current language or in the bonafide and established practice of the trade.
Section 9(2) states that a mark shall not be registered as a trademark if —
- It is of such nature as to deceive the public or cause confusion;
- It contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
- It comprises or contains scandalous or obscene matter;
- Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Section 9(3) A mark shall not be registered as a trademark if it consists exclusively of—
- the shape of goods which results from the nature of the goods themselves; or
- the shape of goods which is necessary to obtain a technical result; or
- The shape which gives substantial value to the goods. Explanation.— For the purposes of this section, the nature of goods or services in relation to which the trademark is used or proposed to be used shall not be a ground for refusal of registration.
B. Relative grounds of refusal :
Section 11 of Trade Marks Act, 1999 lists the relative grounds for refusal of registration.
Section 11 of the Act stipulates that where there exists a likelihood of confusion on the part of the public because of the identity with an earlier trademark or similarity of goods or services, the trademark shall not be registered.
In other words, where there is similar trademark exist in the Trademark register the trademark shall not be registered.
The term “earlier trade mark” means a registered trademark or an application which has a date of application earlier than the trademark in question.
Importance of Timely Response
The reply to Examination Report has to filed within 30 days of the examination report with supporting documents. Also, the reply to the trademark examination report should be drafted with legal expertise referring decided cases on similar matters and judgements by Tribunals / Courts / International references.
Consequences of non-filing of Reply:
Timely filing of reply to trademark objection is a crucial step of Trademark Registration Process. If the reply to examination report is not filed within 30 days of notice / or by the extended time, the Trademark application shall be marked as abandoned by the Trademark Registry. In case the application has been marked as abandoned, the applicant has to file a fresh application for the Trademark.
FAQs on Trademark Objection Replies
A trademark objection is a formal notice issued by the trademark office that points out issues or concerns regarding a trademark application. It highlights the grounds on which the examiner believes the mark does not meet the requirements for registration.
Trademark objections can arise for various reasons, including:
- Similarity to existing trademarks
- Lack of distinctiveness
- Descriptive or generic nature of the mark
- Violation of specific legal requirements
- Incomplete application documentation
A trademark objection reply should:
- Address Each Objection: Respond specifically to each point raised by the examiner.
- Provide Supporting Evidence: Include documents that demonstrate the mark’s distinctiveness, such as sales figures or advertising materials.
- Cite Relevant Laws: Reference applicable legal provisions and precedents to strengthen your arguments.
The reply must typically be filed within 30 days from receiving the examination report. Extensions may be requested by paying a prescribed fee if necessary.
Failure to file a reply within the specified timeframe can result in the application being deemed abandoned or rejected by the trademark office.
No, filing a trademark reply does not guarantee registration. The final decision rests with the examiner based on the merits of your response and compliance with trademark laws
While it is possible to file a trademark reply without legal help, consulting with a trademark attorney is advisable. They can provide expertise in addressing objections effectively and increase the chances of successful registration.
If your reply is accepted, it indicates that the examiner is satisfied with your response, allowing your application to proceed further in the registration process. If not accepted, you may have options to appeal or further address outstanding issues
