Trademark Objection

Trademark objection is one of the steps in the trademark registration procedure when there is an objection raised against the registration of that particular trademark. The objection can be filed by Registrar or the examiner or any other third party. The grounds for refusal of trademark registration is given in Section-9 and 11 of the Trademarks Act 1999.

Section – 9 : Absolute grounds for refusal of a trademark registration

1. Distinctiveness: A trademark needs to be able to differentiate the goods or services of one company from those of other companies.The trademark will be refused registration if there is no distinct character.

2. Descriptive Marks: These marks provide a clear description of the products or services. If the trademarks are descriptive , it will be rejected from getting registered.

3. Deceptive Marks: Marks that could mislead customers or give the wrong impression about the type, caliber, or place of origin of products or services are likely to face opposition.

4. Generic Marks: Terms that are often used to refer to a specific class of products or services are not eligible for trademark registration.

5. Prohibited Marks: Some mark types are not allowed to be registered because they are deceptive, offensive, or immoral. Marks endorsing hate speech, illicit activity, or those in opposition to public policy are examples of these.

Section – 11 : Relative grounds for refusal of trademark registration

1.Similarity: A registered or registration pending mark i.e an existing trademark in the same or a related class of goods or services should not have similarities to the mark that is being applied for. There could be a philosophical, phonetic, or visual similarity.

2. Likelihood of Confusion: Whether or not two marks that are similar is enough to cause confusion for the ordinary customer is the important factor to take into account.

3. Prior use of Trademark: A third party may object based on prior rights if they can show prior use and repute of a mark that is comparable to theirs.

4. Well-Known Marks: To avoid dilution or undue advantage, protection may be extended to well-known marks, even if they are not registered in a particular country.

To make sure your brand is qualified for protection, it is crucial to understand the absolute and relative grounds of objection when submitting an application for trademark registration. Trademark registries utilize the absolute and relative grounds as criteria to assess a mark’s uniqueness and distinctiveness. For the trademark registration process to be successful, it is essential to comprehend these grounds.

Situations when a 3rd Party can rise objection to a trademark registration application are:

When the trademark application is published in the Trademark Journal for public viewing to see, if there arises any objection against the trademark or not.
When the trademark is used by the applicant before it’s registration is verified.

The status of the trademark application will now read as opposed if the opposition by the 3rd Party is accepted based on reasonable grounds.

How to address/file reply to an objection?

Notice of the objection will be sent to the applicant after it is filed

The applicant should file a counterstatement to the objection.

Within 2 months of receiving the notice of objection, counterstatement should be filed.

If no objection is submitted within two months, the application will be marked as abandoned.

1.Go to the Trademark Electronic Filing Portal:

Go to the Intellectual Property India official website.

Proceed to the “Trademarks” area and then select “e-Filing Services.”

2.Register or Login:

Enter your login information to access your account if you already have one.

If you don’t already have an account, you must register by giving the required information.

3.Put the Response in:

Once you’ve logged in, search for the reply to examination report or objection filing option.

Provide the necessary information, including the trademark application number, class, and any other pertinent characteristics.

4.Upload the prepared response and any necessary supporting files in the required format, which is typically PDF.

5.Cover the necessary costs to submit the response.

6.Send in the Reaction:

Submit the response as soon as the fee has been paidRecognition and Extension:

7.You will receive an acknowledgment receipt with a reference number upon submission.

By using the e-Filing portal or getting in touch with the Trademark Registry, you can periodically check the status of your trademark application.

If the Registrar rules in the favour of Applicant

The trademark will be registered if the Registrar grants the applicant’s request.

If the Registrar rules in the favour of the party opposing the registration

In the event that the Registrar grants the party contesting the registration

The application for trademark registration will be denied, and the trademark registration will be taken down from the Trademark Journal.

Appeal by the Applicant against the ruling of Registrar

1. The applicant will go to (Intellectual Property Appeal Board) IPAB to file the appeal

2. Time period of 3 months is given to file the appeal

3. If the applicant was unable to file the appeal within 3 months time, he has to pay fee of Rs.2500 and provide valid reasons why he could not file the appeal within the given time and if the IPAB accepts his reasons, it will move forward.

4.The TradeMarks (Applications, Appeals and Fees to the Intellectual Property Appellate Board) Rules, also referred to as the Trademark rules are necessarily to be abided by during the filing of appeal.

5. The Deputy Registrar checks for any problems in the application,

6. If there arises any error,the candidate gets 2 months to fix the mistakes and submit the application again.

If it is not submitted, the Deputy Registrar will regard the application as abandoned.

The Deputy Registrar will register the case and assign a serial number to it if the application is found to be complete.

Following filing, the case will be heard by the IPAB. The hearing site will be determined by the jurisdiction in which the case is located, in accordance with rule 2(m). The time of the case hearing will be made public. The hearing will therefore proceed.

The IPAB’s ruling in this case will be based on the representations made by both parties.

If a party fails to appear on the day of the hearing, the IPAB may:

Determine the merits of the case.

Send out an ex parte instruction (when one side is not present).

Neglect the case

If the case is dismissed or determined ex parte, a 30-day window is given from the date of the verdict to file a petition questioning the prior order. The lawsuit will be heard, and the IPAB’s decision will be affirmed. If the applicant believes that the IPAB’s judgment has mistreated him, he still has the option to file an appeal with the High Court within the relevant jurisdiction. Subsequent appeals may also be filed with the Indian Supreme Court.

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What is trademark objection and how to file a trademark objection reply online

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