Reasons for Trademark Objection

Reasons for Trademark Objection
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Reasons for Trademark Objection

For a variety of reasons, the Trademark Office may object to a trademark registration application. In this article, we’ll look at the most prevalent causes of trademark objection.

What is Trademark Objection?

Every trademark application undergoes an examination after filing; the application is either Accepted at this stage of Objected in the Examination Report. The trademark examiner objects to your application for various reasons and this is one of the first phases in the trademark registration process which is also known as Provisional Refusal in case of objected application. The Registrar looks for valid reasons or explanations concerning the mark and its registrability; therefore, it’s not a straightforward denial of your application. He offers the Applicant the chance to explain how the Trademark meets the requirements for successful registration.

What are the Types of Trademark objections?

The reasons for the rejection of a TM application may be mainly classified into two categories:

  • Absolute Refusal

Section 9(1)(a) prohibits the registration of trademarks:

  1. which lacks any distinguishing characteristics, that is, are incapable of distinguishing one person’s goods or services from those of another

Section 9(1) (b) prohibits the registration of trademarks:

  1. The trade marks 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 service.

Section 9(2) lays down which marks cannot be registered

  1. it is of such an intention to deceive or confuse the public
  2. The section comprises any matter likely to offend any class or division of Indian citizens; c. it comprises or contains scandalous or obscene matter
  3. Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
  • Relative Refusal

The relative causes for registration refusal are listed in Section 11 of the Trade Marks Act of 1999.

Officials must not register the Trademark if public confusion can occur due to its likeness to an earlier trademark or similarity of products or services, according to Section 11 of the Act. In other words, if the Trademark Register already has a similar brand on its record, Officials will not register the Trademark and may raise an objection under S 11 (1) of the Trade Marks Act, 1999.

A registered trademark or an application with a date of application earlier than the Trademark in issue is referred to as an “earlier trademark.”

The mistakes that one makeswhich leads to clerical Trademark Objections are:

Filling of Incorrect Trademark Form

If the application is not presented on the right form, the trademark examiner will issue an objection.

Incorrect Applicant Name or Nature of business

The Applicant name, including name of all persons in case of joint ownership of mark, and the nature of business must be clearly specified on the Application form. In case of dealing as a company or partnership firm, the same must be specified along with the nature of business.

Incorrect Address on the Application 

If the Applicant’s primaryaddress of service is not specified and is incomplete in the application, the objection would be to provide complete service address by the way of filing TM M.

Wrong Specification of Goods and Service

The trademark examiner will raise concerns about the application’s inclusion of incorrect goods or services which does not fall under the class applied for. It is very important to correctly specify the goods or services and file the application according to the class of your goods or service only, incorrect filing of goods may result in paying extra government fees for correction and in many cases the correction requests are also disallowed as any addition in goods and services are not allowed under Rule 37 of the Trade Marks Rules, 2017.

Why does my trademark gets objected?

Similar Trademark already exists.

If the Trademark sought to be registered exhibits any likeness or similarity to something that already exists, the examiner has the right to question registration of such mark. The objection will be made under section 11(1) of the Trade Marks Act since there are identical or similar marks on record for the same or similar descriptions, which may cause confusion among the general public. In this scenario, the Applicant can defend his or her Trademark by demonstrating that it is distinct from others.

Trademark doesn’t Contain Distinct Character.

Trademarks that fail to differentiate one person’s goods and services from those of another are considered to be lacking unique character and hence subject to objection. To overcome such an issue, the Applicant must show that the Trademark has its own personality as a result of its earlier usage or arbitrary nature.

Trademark is Misleading

If the trademark examiner believes that the Trademark can deceive the public in terms of its usage, nature, quality, or other factors, he or she might file an objection.

Incomplete User Document

In case you have applied your trade mark claiming use of the same, you will have to submit a duly notarised user affidavit on a stamp paper along with its supporting documents. If these documents are missing, then the examiner will raise an objection to provide correct documents.

What can the Applicant do?

To avoid such objections you can always take professional assistance before filing a New Trade Mark Application.

In a situation where you have already applied for the registration and if you are confused to understand the examination report you can call us on our toll free number 1800-309-9944 or 99992 23372 for any kind of assistance.

Trademark Examination Report

Following the evaluation of the application, the registrar issues an examination report and determines whether or not the application can be approved. If the Trademark was accepted, the Registrar proceeded to publish it. If the inspection report contains any observations, the applicant/trademark agent will be notified so that you can submit a response to the examination report.

The cause for the objection must be included in the trademark examination report. The Applicant has a due date of 30 days from the date of the examination report to respond. You can connect to Mark-O-Legal for smooth process of your objected application.

Following that, the Applicant will be required to respond to the objection within 30 days of receiving the examination report. If the Registrar finds the response to the examination report satisfactory, the application will be accepted and published in the Trademark Journal if not then the applicant is given a chance to re submit the clarification through a hearing which may be physical hearing or a video conferencing hearing.

How to Reply to the Objection Report?

After receiving the report, you must explain how your mark meets all of the conditions for becoming an excellent registrable mark. This must be completed within 30 days, or the registration will be refused (Abandoned).In case you feel that you require professional assistance in evaluating and responding to this objection notice you may contact our team at Mark-O-Legal and we will lend our helping hands to you.

It’s just as essential to maintaining a brand as it is to build one. To avoid any problems, contact us for a detailed examination of your brand name before submitting a registration application to prevent all trademark objection issues. An error free trademarkapplication reply can save you time, money, and your brand. If you don’t, you may have to drop your trademark application. We will make sure your brand name is not prohibited for you to use.

Advocate Nazia Aziz
Advocate Nazia Aziz

Nazia Aziz is enrolled with Bar Council of Delhi. She is currently a pera legal volunteer and trainee associate.

This Post Has One Comment

  1. shyam

    nice blog

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