How to reply against Trademark Objection in India?

Trademarks confer a right to use specific shapes, symbols, colors on goods owned by the business. The process of trademark registration requires careful planning and execution. Trademark registration in India requires approval from the registrar of trademarks. However, in certain cases, the registrar objects to the grant of the trademark. This may lead to delays or rejection of the trademark, if not properly responded to. In this post, we highlight what you must do in case you receive an Objection from the registrar for the grant of the trademark.

What is Trademark Objection?

Trademark objection happens to be one of the initial stages in the Trademark registration process. Trademark objection does not mean a straight denial; instead, the trademark registrar seeks a valid reason or explanation about the mark and registration. An opportunity is given to the applicant to explain how the said trademark fits the criteria to avail valid registration.

In the event of a trademark objection, a comprehensive reply needs to be filed within a month from the objection’s date of issuance.

Reasons for Trademark Objection

There are several reasons given in Trademark Act but mainly the following three sections are to be noted by the registry: –

Section 9(1)(a); This section says that if any mark/word is unable to distinguish its product/service from that of the other then it is not appropriate to be accepted as Trademark for that product/service.
Section 9(1)(b); It explains that if the word/mark is applied and is used in trade to designate kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service then in such case that mark/word will not be accepted as Trademark.
Section 11(1); It indicates that if the word/mark applied for trademark is anyhow identical or similar to any existing trademark then it will not be accepted as trademark by the registry.

Important note: Objection may also be sent by the registry if the mark/word is following the above reasons but is not as per the other terms and conditions of the Trademark Act or the application is not appropriate due to human errors like wrong classification of Trademark Class, etc.

How to check the status for Trademark Objection?

To know the status that the registry has objected the application the applicant is require to follow the below procedure:

For checking the status go on ipindiaonline.gov.in and click on Trademark application/Registered Mark option.
Select the option of National/IRDI Number in case of Resident Indian.
Put up the credentials with captcha code for seeing the status and click over the link of examination report to download it.

Trademark Examination Report

The Trademark registry examines a trademark application within a period of 6 months to 1 year from the date of filing the trademark objection. An examination report contains the facts, issue and all other relevant drafts of the trademark which is raised for objection. It is a report describing the objection details of the application against which the reply is required to be filled by the applicant or trademark agent as appropriate with that of examination report.

How to File a Trademark Objection Response?

When an objection is raised, the status of the trademark in the Indian Trademark Registry will be marked as “Objected”. The following are the steps to file a response in the event of a trademark objection:

Step 1: Analyzing Trademark Objection

The first step involves analyzing and studying the objection carefully, as any ambiguity in understanding can lead to incorrect filing of Trademark Objection Response.

Step 2: Drafting and Filing of Reply

After getting the objection raised by the registry one should draft a reply in which he/she will try to satisfy the registry for which the objection has been raised. This reply must be filled within 30 days from the date of objection raised by the registry. The time limit can be further extended on the request of the applicant with a valid reason of delay in filing.

Applicant can file this reply electronically on the official site of trademark by following the below steps: –

Login on the official website of trademark with user id and password.
Select the option of new forms and the select the MIS-R Reply to the Examination Report form.
You need to type the application number for which objection is raised.
Once you process the same it provides you with an option to attach the reply drafted in pdf format along with the Power of attorney.
Select the mode of appearing in case of hearing
Now submit the reply with digital signature of attorney

Step 3: Receiving Acceptance or Trademark Hearing

After filing of reply the registry will examine the reply and if it is satisfied then it will move further for the advertisement but if not satisfied then one more chance is to be given for proving themselves as hearing. In which the applicant or trademark agent have to appear before the concerned authorities and if they satisfied then the objection can be waved off. But if not then the application will be rejected by the registry.

Step 4: Advertising in the Trademark Journal

Once the application is accepted on hearing, the Trademark will be allowed to be published in the Journal. If the examiner refuses the mark, then a Refusal Order is passed along with the valid reasons of infringement.

Step 5: Certificate of Registration

Once the mark is advertised in the Journal, it is made available for the public for scrutiny. If no objection is raised within a period of 4 months, then the mark will continue towards its registration and a Registration Certificate shall be provided to the Trademark registered Holder. However, if an objection is raised then a hearing will take place between the parties in accordance with the rules of the Act.

Consequences of non-filing of reply

If the applicant is unable to file, the reply within the time limit of 30 days or the extended time then the ministry will declare the application as abandoned and the applicant is then requiring to file a fresh application for the same trademark.

Conclusion

Creating a brand and making it registered is a very important part of starting a business. For a person/company creating a brand, it is necessary for it to timely make the registration of the mark complying in accordance with the rules specified under the Trademarks Act, 1999. A Trademark Holder has a right to file a reply in case his trademark is in question at the time of the registration. All the rules and procedures must be followed for the registration of the mark and any infringement shall result into penalties under the rules of the Act.