When the status of a trademark application is shown as 'Objected' on the Indian Trademark Registry website, it means that the Trademark Examiner has raised an objection against the Trademark Application in the Examination Report. This may so happen that after reviewing the trademark application, the Registrar may raise an objection under Sections 9 or 11 of the Trademarks Act. Further, there may also be cases where TM-M is also asked to be filed for the modification / rectification required in addition to Objection under Section 9 or 11.
WHY SHOULD YOU CARE ABOUT OBJECTION?
Getting a Trademark Objection is very common in the process of Trademark Registration. If your TM Application has received the “Objected” status under the examination report issued by the Trademark Registry, you should not get panicked and think the battle is over. In fact, at this stage you must exercise extreme caution when submitting the REPLY TO EXAMINATION REPORT. It also becomes important that you read the Objection under Section 9/ 11 and start your preparation of making Reply at the earliest possible time because total timeline to reply to objection is one month only. In any case, if you miss to file the Reply to Examination Report, your mark/logo will be “Abandoned” for the want of Reply to Objection.
Important Notes for Consideration:
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If you have received the status of your trademark application as “Objected”, a trademark examination report must have been issued which invariably contains the remarks of the Examiner and reply to the same is what required to complete the trademark objection process.
- The examination report determines whether the trademark is permitted or not. If there is no objection, it means it must have got either accepted or would have been asked to file TM-M for corrections.
- It is possible that even after your Reply to Examination Report, the Objected mark may not change to Accepted and you will see the status of Ready for Show Cause Hearing. Show Cause Hearing is basically the last opportunity for the applicant/ attorney/ agent to submit arguments as to why the application shall be allowed for acceptance and advertisement.
REPLY TO TRADEMARK OBJECTION/ EXAMINATION REPORT
If your trademark application has received Objection in the examination report, you must note that these trademark objections are not always justified and with a befitting reply on merit the same could be waived off. A reply to trademark examination report with respect to the TM Objection under Section 9/ 11 must be filed with complete due diligence and support the contention with the relevant case laws which you can strengthen your stance. Essentially, in the Reply, you are supposed to rebut each remark made in the examination report. The pointers in the Reply must be well researched and drafted with caution to overcome the objection.
DIFFERENCE IN OBJECTION UNDER SECTION 9 AND SECTION 11
Trademark objections under Section 9; if the Registrar believes the mark is descriptive of goods/generic/laudatory/indicating quality or nature of goods. This means that if the mark is not a specific name, but rather a description of the work or the quality of the product, the Registrar may object to the Trademark’s lack of distinctiveness.
Trademark objections under Section 11; the Registrar may object to a trademark application if it is identical/similar trademark already on the Trademark Registry or even similar to a pending trademark application.
WHAT TO DO IF YOU HAVE RECEIVED TRADEMARK OBJECTION UNDER EXAMINATION REPORT
If the Examiner has objected to the trademark application, the applicant/ attorney/ agent must file a written reply within one month of receiving the examination report. The Trademark Registry asks you to file a REPLY TO EXAMINATION REPORT by mailing it to parm.tmr@nic.in or by uploading MIS-R on the online portal of IP India Website. In the Examination Report, it is also mentioned that one can also opt for Hearing within a month time directly instead of first making a reply and submitting it.
WHY REPLY TO EXAMINATION REPORT IS IMPORTANT
As per the Trademark Registry, the applicant is requested to submit their response/submissions, if any, along-with supporting documents, or one may also apply for a hearing within One Month from the date of receipt of the Examination Report Issued.
Please Note that if no reply is received or a request for a hearing is applied for within the above-mentioned stipulated time, the said application shall be treated to have been abandoned for lack of prosecution under Section 132 of the Trade Marks Act,1999 and thereafter the status of application in the computer database shall reflect the factual position.
GROUNDS FOR TRADEMARK OBJECTION
Some of the reasons for an objection to a Trademark Registration application are as follows:
Incorrect use of trademark form
The examiner of trademarks may raise an objection if the application is made in the incorrect or inappropriate form.
Incorrect use of the applicant's name
The application must include the names of all partners, authors, or owners, and must be filed in the name of a partnership firm.
Failure in the filing of Trademark form
When a Trademark attorney or an agent requests a Trademark registration application, it must be filed using form Power of Attorney, along with a letter authorising the attorney or agent. However, if such a failure occurs, the trademarks to be registered may be challenged.
Incorrect address on a trademark application
The Registrar may object to the registration of any trademark if the application shows an incorrect or false address of the applicant. A valid address must be entered into the form.
Incorrect product and service specifications
If the application shows a hazy number for goods and services in the list, the examiner may raise concerns. If the examiner raises such an objection, the applicant must file a request o to have the objection removed. Furthermore, the applicant should specify the specific items for which the Trademark is being sought.
Already registered trademark
If the examiner or authorised person believes that the logo, symbol, or sign for which the Trademark has been applied for is already registered in the Register of Trademarks, the application for Online Trademark registration may be objected to. This objection is permissible under Trademarks Act Section 11(1).
Lack of distinctive character
Trademarks that are unable to distinguish between the goods and services of one person and the goods and services of another can be raised for the Trademark objection process. To overcome such a situation, the applicant must provide evidence that the Trademark is distinctive in nature and has its own personality.
Trademarks that are deceptive or misleading
The Trademark examiner may object if he believes that the trademark to be registered will deceive or mislead the public in terms of its use, nature, or quality, or if it will provide misleading information. In such a case, the applicant may choose to file TM-16 to request exemption of goods and services from this specification.
HOW TO FILE REPLY TO TRADEMARK OBJECTION IN INDIA?
Filing a trademark objection response is required or you will lose brand protection. The following is the procedure for filing a trademark objection reply in India:
#Carefully Examine the Objection Grounds: The first step is to thoroughly understand the grounds of the trademark objection. Failure to do so may result in the incorrect filing of a trademark objection reply. As a result, be cautious in your submission of the reply.
#Prepare the Trademark Objection Reply: The next step is to finalise the response in the form of REPLY TO EXAMINATION REPORT. Drafting a trademark response requires specialised knowledge of trademark law and should be delegated to an expert such as an advocate or an attorney or a company secretary in practice.
DOCUMENTS REQUIRED FOR REPLY TO TRADEMARK OBJECTION
It is necessary to draft a reply to trademark objection and demonstrate the distinctiveness of the mark in order for it to be registered. As a result, the documents required are minimal, including a properly drafted Trademark objection reply that includes:
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A response to the objections raised using relevant case law.
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Documents supporting the claim of inherent or acquired distinctiveness.
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An affidavit of Usage, along with supporting documents, could also be filed with the response to the examination report, demonstrating that the trademark has acquired distinctiveness and is being associated with the applicant's goods/services as a result of its prolonged use.
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Power of Attorney, in response to the objections if earlier not executed and have to be filed through an Attorney/ Agent.
OUR ASSISTANCE IN FILING THE REPLY TO TRADEMARK OBJECTION
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Understanding the root cause of Trademark Objection
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Seek important information from the applicant about the brand
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Compiling of case laws in support of your trademark application
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Drafting the REPLY TO EXAMINATION REPORT judiciously
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Vetting of the draft with a senior and experienced Attorney/ Agent
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Final submission of response to Trademark Registry on the merit
Do not hesitate contact us, if you have any question. We have in-house team of industry veterans who have seen thousands of such cases of trademark objection and can also help you to protect your IP.
