In a general scenario, the registration of the trademark process commences with trademark search and filing of an application for registration. The next procedure is the objection of a trademark. The applicant who applies for registration should be capable enough to prove the validity of the proposed trademark. The examiner or the trademark registry should get satisfied with the proposed trademark. If the examiner or the Trademark Registry is not satisfied towards the registration of the proposed trademark it will lead to the objection of the proposed trademark. The objection must be justified by the Trademark Registry or the applicant needs to prove the validity of the proposed trademark. Once the objection is raised the status of the trademark in the Indian Trade Mark Registry will be marked as Objected. Failing to satisfy or validate the application of the proposed trademark will paramount lead to rejection of the application.
The Trademark objection appears in the trademark registration process at an initial stage. It does not mean straight denial by the examiner or the trademark registry for registration rather if the examiner felt unsatisfied about the proposed trademark the examiner will call upon the applicant to render valid justification for the proposed trademark for registration. The applicant should satisfy the examiner or the Trademark Registry and prove that the proposed trademark deems fit in the criteria to avail valid registration.
The examiner may object to the proposed trademark for two specific reasons. They are:
Incomplete or wrong information appears in the proposed trademark;
Existence of Identical trademark.
The Examiner or the Trademark Registry will render ample opportunities to the applicant to contend for the proposed trademark as per the process laid under the Trade Mark Act 1999.
The Indian Trade Mark Registry will mark the proposed trademark as “objected” as soon as the objection is raised. Thereafter the applicant has to adhered to the below-mentioned process to respond to an objection:
The nature of the objection must be analysed carefully by the applicant. It is due to the reason that the proposed trademark when it is objected by the examiner or the trademark registry the same shall be notified to the applicant. After notification, the applicant is obliged to file a counter-statement to the objection within a time period of two months from the receiving of the objection notice. The applicant must be in a position to render suitable justification for the objection to register the proposed trademark. For this scrutinization, the nature of objection is considered paramount.
The response must provide proper justification for the objection raised. It should provide a fitting rebuttal to the objection raised with supporting rule of law, evidence and precedents to validate the response. The applicant needs to differentiate between the proposed trademark and the mark in conflict. An affidavit should be attached stating the usage of the trademark in the applicant’s website, social media platform, publicity materials, availability of trademarked products on e-commerce platforms in conjunction with related documentary proof. Thereafter this draft is filed online on the Trademark e-filing portal.
After filing the response by the applicant, the examiner or the registrar will decide the validity of the applicant’s response. They will peruse the draft and after they get satisfied with the applicant’s response for objection the proposed trademark will be processed for registration and advertised in the Trademark journal. On the other hand, if the examiner seeks further interpretation the applicant will be notified to appear before the Intellectual Property Appellate Board (IPAB) for further hearing to justify the objection.
If the examiner is satisfied with the justification given by the applicant the proposed trademark will be accepted and published in the trademark journal. Per contra, if the examiner is not convinced, he shall pass a refusal order to the proposed trademark to get published in the trademark journal. The examiner has the sole discretion either to accept or to reject the proposed trademark. On refusal order passed by the examiner, the applicant can go for appeal by filing of review petition by stipulating the grounds for review within 30 days.
At last, after undergoing the process of filing of reply to trademark objection and completion of the review process the proposed trademark will again get published in the trademark journal. Again, it will be open to scrutiny for the period of four months. If there raises no opposition towards the proposed trademark during that time the examiner will register the proposed trademark.
Section 9 of the Trade Mark Act 1999 stipulate the Absolute Grounds on which trade application can be rejected. Section 9 lays down restrictions for certain kinds of marks from registration.
Section 9(1)(a) stipulates that any mark which is not distinctive so that it will not differentiate the goods or services of the applicant from that of others cannot be registered under the Trademark Act 1999.
Section 9(1) (b) stipulates that the words of common language, common words, names and other expressive words of general nature cannot be registered under this act. Section 9(1) (c) prevent the purview of marks that are customary in language or followed in deep-rooted practice or process of the trade from being registered under the Act.
Section 9 also lays down two grounds upon which the Trademark objection can be saved. If the proposed trademark has been sufficiently used and achieved distinctiveness even before the date of application will not be hit under section 9(1)(a). It should be able to differentiate with other goods and services through its acquired or inherent uniqueness and have established reputation and status quo in the market will be prevented from objection under section 9. In regard to the objection under section 9(1) (b) it is an understood fact that one should infer into the fact as to how the trademark is perceived by the public rather than a stringent grammatical explanation to conquer the objection.
The same was discussed in the case of Keystone Knitting Mills Ltd.’s TM [(1928) 45 RPC 193] It is a landmark judgement which states that the applicant can overcome the objection by proving that the proposed trademark has obtained secondary meaning which associates with the product or services and if it is proved that the trademark has obtained inherent distinctiveness in the market and among the public even before the process of registration then objection cannot be raised towards the proposed trademark.
Therefore, in a nutshell reply to an objection can be made under Section 9 by filing an affidavit of use by pointing out the use before the date of application by at least 2 to 3 years along with supporting documents like invoices, advertising, and internet extracts etc... And by previous Indian registration in an equivalent class.
Section 11 of the Trademark Act 1999 stipulates the Relative grounds for refusal of registration of a trademark. It lays down that where there prevails a possibility of distraction on the part of the public because of the similarity of the earlier trademark or identity of goods or services, the trademark shall not be registered. In some way or the other when there prevails some identical trademark in the trademark register the same shall be exempted from registration. At this juncture, the term “earlier trademark” depicts the meaning as a registered trademark or an application that has a date of application earlier in consonance than the trademark in question. For example: The trademark “Moffy” and Moffie” sounds the same in a readymade garments business and the mark “Airtel in the telecommunication business and “Airtel” in the footwear business.
Section 11 (11) protect the trademark from objection. It states that when a trademark is registered in good faith by disclosing all material information’s to the Registrar or where the right of the trademark has been obtained through use in good faith before the initiation of this act, then nothing in the Act shall prejudice the validity of the registration of the trademark or the right endowed to use the trademark on the ground that such proposed trademark is identical with a well-known trademark.
Compliance Calendar aid in giving a reply to the trademark objection. We assist by analysing the existence of any similar trademark in comparison with the proposed trademark. It will correlate the nature of the proposed trademark with the already existing trademark. After due scrutinization, we find that the proposed trademark lacks its nature of uniqueness or distinctiveness, we will mention that the proposed trademark is not valid for registration.
On the other hand, if Compliance Calendar finds that the proposed trademark has been acquired through use in good faith or it achieved a good opinion in the minds of the general public even before the commencement of registration then Compliance Calendar will assure that the proposed trademark holds validity for registration. If you have any questions, feel free to reach out at info@ccoffice.in or connect at 9988424211.