Introduction
The authority that gets your trademark application would review your mark to determine whether it might be mistaken for another marker that is already registered or for other marks that are currently in use. Let's say they discover a good explanation for why your brand is distinct from the others. They will then respond by sending you a notice of trademark objection. This is the very first stage of the opposition process for trademarks.
If there isn't a compelling argument against opposing your mark, the trademark examiner's office won't do so. Once they are registered, trademark rights are typically shielded for ten years. You must submit a formal trademark renewal application to extend your mark's protection for the full ten years. While requesting a trademark, you must give a thorough justification for how your mark differs from the opposing marks. Your "objection reply" is now necessary.
Trademark Refusal
A trademark opposition is the second phase of trademark registration. All trademark applications will be reviewed by the registrar of trademarks.
There are some specific grounds for the refusal of a trademark which are given below.
Absolute grounds to deny registration under Section 9 of The Trade Marks Act,1999.
Clause 1 (a) forbids the registration of trademarks without any unique characteristics. A term or words must generally be unable to be applied to the goods of anybody else to be truly unique to a person's goods. There are two sorts of distinctiveness: inherent and gained. There may be some intrinsic traits or distinguishing characteristics in the mark itself that make it unique or capable of differentiating the goods of one person from those of others, making the mark distinctive or capable of identifying the goods.
When determining whether a mark is inherently distinctive, one must examine the mark independently of any unique external circumstances and without taking into account any extrinsic proof of such circumstances. One must also determine whether, when viewed in isolation from any such circumstances, the mark could be said to be capable of differentiating the applicants' goods from similar goods sold by other traders. Additionally, the Act acknowledges that a mark may develop a distinctive character through use, which will be covered when describing the proviso to Section 9. (1).
Clause1(b) forbids the registration of trademarks that are made up only of marks or indications that can be used in trade to identify the kind, quality, amount, intended use, value, geographical origin, time of manufacture, or the rendering of the good or service, among other properties. Marks that are both descriptive and non-distinctive concerning the products or services for which protection is sought are covered by this clause.
Clause 1 (c) prohibits the registration of trademarks that are only composed of signs that have been used in the present lexicon or legitimate and accepted commercial procedures. The purpose of adding clause (c) to Section 9(1) of the Act is to prevent the free use of indications or markings that are already in use in commerce from becoming monopolized as trademarks.
If a mark has become unique through usage or though it is a well-known trademark, it may be registered even if it lacks distinguishing character and is purely descriptive. A descriptive mark may be registered if it has developed a secondary meaning associating it with a specific good or as coming from a specific source. The following variables are taken into account when determining whether a mark has acquired distinctiveness in this context: the period of use, the number of goods sold, the scope of the services rendered, the use of an ad slogan, the use of the mark in combination with other marks, the cost of advertising, and evidence from consumer and trade surveys.
Clause 2 (a) This clause largely addresses trademarks that are misleading due to something about them or how they are used, such as the nature, caliber, or place of origin of the goods or services, or any other aspect that makes up the mark. It is crucial to understand that Section only addresses situations in which confusion or deception results from the character of the mark itself rather than from a mark's likeness to another mark. The protection of the public interest is the main goal of this regulation. Therefore, even if the applicant acts in good faith, even if there hasn't been any objection, or even if there is consent if a particular mark is deceptive or untrue, registration will be denied.
Clause 2(b) forbids the registration of a mark if it contains or includes any content that may offend any class or group of Indian citizens' religious sensitivities. Given that it is a prevalent practice in India to utilize religious symbols, names, and images of Gods and Goddesses as trademarks, this provision must be included as one of the grounds for refusing to register trademarks.
Clause 2 (c) According to the Act, marks that contain scandalous or indecent material cannot be registered. The determination of whether a mark is scandalous or obscene will be made case-by-case, and the burden of proof will be on the applicant to establish that it is not so through supporting documentation and dispel any objections.
Clause 2 (d) Finally, the Emblem and Names (Prevention of Improper Use) Act of 1950 prohibits the registration of a mark if its use is forbidden by the act. This law forbids the improper use of specific names and insignia for business and professional reasons.
Clause 3 (a) The registration of a shape as a trademark is forbidden if it comprises solely a shape derived from the nature of the goods themselves, a shape of the goods required to achieve a technical result or a shape that adds significant value to the goods. Therefore, it must be possible to differentiate the applicant's goods from those of third parties without falling under Section 9's restrictions on the shape of goods to be eligible for registration as a trademark.
Clause 3 (b) To prevent traders from monopolizing the shapes of specific commodities, the first section of the rule is principally intended to exclude from registration basic shapes that will be usable by the general public.
Clause 3 (c) A comparison between the shape being sought to be registered and the shapes of analogous articles must be undertaken to assess whether a specific shape has a substantial value under the third section of the provision. The only time a shape will be barred from registration is if it lacks, relative to other shapes, substantial value.
Relative grounds to deny registration under Section 11 of the Trade Marks Act,1999:
Trademarks mislead consumers because they are identical to previous, similar trademarks for goods or services.
Trademarks that cause public confusion because they resemble a previous, identical brand for products or services.
The Registrar of Trademarks may grant the registration whether there is an honest concurrent use of the trademark, which constitutes an exemption to this rule.
It gives the specific reasons why a trademark application may be denied registration when the applied mark is the same as or similar to an existing mark, the goods or services are the same as or similar to an existing mark, and there is a likelihood that consumers will mistakenly associate the applied mark with the existing mark.
Listed under Section 11(2) are the following reasons for denial:
Trademarks that would unfairly profit from an earlier, well-known, comparable trademark in India.
Trademarks that would harm an older, well-known, similar Indian trademark's distinctive character or reputation.
Section 11(3) outlines the following grounds for denial:
The law of passing off, which guards an unregistered trademark exploited in the course of business, is bound to prevent the use of the brand.
The law of copyright will inevitably forbid the use of the trademark.
The trademarks listed in Sections 11(2) and 11(3) cannot be denied registration unless the owner of the previous trademark objects in an opposition procedure.
All of the aforementioned grounds are exempt under Section 11(4). It specifies that if the owner of the previous trademark assent to the registration, the trademarks covered by Section 11 may be registered. The holder of the previously well-known brand must give authorization for the Registrar to register the latter trademark.
If the earlier mark is determined to be a well-known mark (as defined under Section 2(1)(zg) and determined by the conditions contained in Sections 11(6), (7), (8), and (9)) and use of the applied mark would harm the earlier trade mark's distinctive character, the registration of the earlier mark would be prohibited.
Report on a trademark examination
The registrar looks over the application, creates an examination report, and determines whether or not to accept it. The register promotes the trademark if it is approved. The applicant/trademark agent will be informed of the findings in the examination report and allowed to respond.
The trademark examination report must include an objection. Within 30 days of obtaining the examination report, the applicant must submit his response. The trademark agent often receives this examination report for action.
If the response to the examination report is satisfactory, the registrar will register the application and publish it in the trademark journal.
Objections' Justifications
The principal grounds for the Registrar of Trademarks' opposition to the application are as follows:
The trademark application and the trademark that has already been registered are similar, or
If the trademark lacks a distinguishing feature or cannot distinguish between different items.
Deadline for Submitting a Response to an Examination Report
Within 30 days of receiving the report, you must provide your response and any necessary supporting documentation. The response to the trademark examination report must be drafted by a lawyer with legal knowledge, citing precedents from comparable instances and rulings from tribunals, courts, and international organizations.
Extend the deadline for filing objections Response
The application will be deemed abandoned if no response is received within 30 days after the report. By sending TM-M to the registrar and providing a convincing justification for the delay, the applicant may file an electronic application for some time extension through the trademark agent. If a different trademark is going to file the reply to the examination report, a new Power of Attorney is also required. The next step is to compose the response to the objection.
Effects of failing to provide a response
An essential part of trademark registration is timely opposition responses. If the reply to the examination report is not submitted within 30 days of notice or by the extended period, the trademark application will be listed as abandoned. The applicant must reapply if the application has been flagged as abandoned. Nonetheless, be careful to seek professional legal guidance.
Conditions for Responding to Objected Trademark
After receiving an objection, the applicant has 30 days to respond in writing. If the reply is not submitted within 30 days following the report, the application will be deemed abandoned. Requesting an extension of the 30-day reply deadline requires filling out Form TM-M with the necessary information.
How to Respond to a Trademark Objection?
Trademark Objection Response- When the registrar thinks the application is subject to objection, it is in the condition of being objected to. The trademark agent will be advised of the grounds for the objection following receipt of the examination report. 30 days are given to the applicant to respond to the same.
Analyzing- the examination report is the first step in figuring out the objection's justification.
The first answer to the issue- The next stage is to write an objection reply that addresses the objection properly and is supported by relevant legal precedent, court rulings, and other supporting materials and proof.
Deadline for responding- Within 30 days of obtaining the examination report, the reply to the objection must be sent along with any necessary supporting materials.
If the response is approved- The application will proceed through additional processing for registration and publishing in the trademark journal.
If it is rejected- If the registry rejects it, the trademark agent will be informed when a hearing is planned.
Documents Necessary
A written response to the examination report must be sent together with thorough justifications for why the application should be approved. The following papers are necessary.
The power of attorney
Response to a report on an examination
Invoices, letterheads, letters, visiting cards, screenshots of websites, brochures, and other trademark-related materials are examples of evidence of trademark use in commercial activity.
Handling the Trademark
Opportunity for Detailed Submission That Was Objected - Because the applicant is heard, there is no prospect of a trademark being refused straight away.
A flawless response increases the likelihood of acceptance- If the objection reply is properly filed, the trademark has the highest likelihood of being registered.
Conclusion
It will be your responsibility to justify how your score differs from the others. An "objection reply" is a response to the trademark examiner's objections. Your ability to demonstrate how your mark differs from the opposition should be aided by the trademark examiner's answer to your mark. List the products and services that your trademark applies to. Examiners of trademarks frequently issue specified formats for responses. To proceed to the second step in the registration procedure, you must submit a response to the examination report. The entire TM application would be abandoned if the reply to the trademark objection report was not submitted within a month of the report's dispatch date.
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