What Is Trademark Objection?
A trademark objection is a formal claim that a third party has infringed on your trademark. Suppose you’re the owner of a trademark, and you notice that someone else is using it to sell similar products. In that case, you can file an objection against them. Trademark opposition has two main reasons:
- Incomplete/wrong information
- Existing trademarks
Any trademark application must be accurate and free of errors. Incorrect information, such as the wrong applicant’s name or principal place of business, could lead to trouble.
- Incorrect details on the trademark form: A trademark objection will likely arise if the applicant’s name, principal place, or anything else in the trademark application is false
- Incorrectly filing a trademark application: The examiner can object if the trademark application is filed incorrectly. TM-48 must accompany a trademark application if a trademark lawyer or agent files it.
How Trademark Objections Work
Suppose you have a trademark that someone else is using without your permission. In that case, you can send them a letter claiming their trademark to be confusingly similar to yours. If they don’t respond to your claim within the allotted time frame, then it becomes an official objection. But what happens if the marketer that claims your trademark objecting doesn’t respond? You still have a chance at winning the case. The law states that if another party has used or started to use your mark in commerce and no one objects, then they own it. This type of automatic ownership of trademarks is known as constructive notice. So, even though the other party didn’t respond to your objection, you still have ownership of your trademark because they were using it before you objected against them.
Trademark Objections: How to Respond
Once you have received the report, you will have to explain how your mark satisfies all the requirements for being a valid registrable mark. If this is not done within 30 days, the mark will be abandoned.
- Examining the objection
- Response to trademark objection
- Hearing on trademark objection
- Publication in the trademark journal and appeal (If needed)
Steps to Get an Objection Cancelled
There are two ways to get a trademark objection withdrawn. It is possible to convince the trademark examining authority that the mark does not pose any likelihood of confusion with your existing mark. The other way is based on the concept of abandonment.
This means you must prove that you have not used your mark in India for at least five years since it was registered. But what if your application is rejected? The examining authority will issue a declaratory order. This basically means that your registered mark cannot be refused or cancelled due to the lack of likelihood of confusion between it and any other mark.
Trademark Objections:
Here is a detailed explanation of trademark registration objections in India:
Procedural Objections:
The Trademark Registry may issue objections if the application does not comply with the procedural requirements. This can include errors or incomplete information in the application form, incorrect filing fees, or missing documents. To address these objections, the applicant must rectify the deficiencies and provide the necessary information or documents as per the registry's instructions.
Descriptive or Generic Trademarks:
Trademarks that are descriptive or generic in nature may face objections. Descriptive terms directly describe the product or service, while generic terms are commonly used to refer to the category of goods or services. To overcome this objection, the applicant can provide evidence of acquired distinctiveness or secondary meaning, demonstrating that the trademark has gained recognition and is associated with their specific product or service.
Similarity with Existing Trademarks:
If the proposed trademark is similar or identical to an existing registered or pending trademark, an objection may be raised. The Trademark Registry conducts a search to identify conflicting marks, and if a similarity is found, an objection is issued. To overcome this objection, the applicant can submit arguments highlighting the distinctive features of their trademark and how it differs from the existing ones. It may be necessary to provide evidence of extensive use and consumer recognition to establish the distinctiveness of the proposed mark.
Deceptive or Misleading Trademarks:
Trademarks that have the potential to deceive or mislead consumers about the nature, quality, or geographical origin of the goods or services can face objections. If the Trademark Registry considers the proposed mark misleading or likely to cause confusion, an objection is raised. To overcome this objection, the applicant needs to provide arguments and evidence to establish that the mark is not deceptive or misleading and that it accurately represents the characteristics of the goods or services.
Prohibited or Offensive Trademarks:
Trademarks that violate the provisions of the Trademarks Act, 1999, such as those that are obscene, offensive, contrary to public policy, or likely to hurt religious or cultural sentiments, may face objections. In such cases, the objection is raised to protect public morality or prevent the use of marks that may cause harm or offense. To overcome this objection, the applicant may need to provide justifications, explanations, or amendments to address the concerns raised by the objection.
Lack of Distinctiveness:
If the proposed trademark lacks distinctiveness and is considered too common or generic, an objection may be issued. The trademark should be capable of distinguishing the goods or services of the applicant from those of others in the market. To overcome this objection, the applicant can provide evidence of acquired distinctiveness through extensive use, advertising, or consumer recognition.
Conclusion
Maintaining your brand is just as imperative as creating it. You can save time, money, and your brand by filing your trademark objection reply on time. If you don’t, your trademark application might be abandoned. Check that your brand name doesn’t fall under the grounds of refusal. Check the brand name well before registering it to avoid any hassle.
Created & Posted by Sony Garg
Accountant at TAXAJ
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