When you file an application for a trademark, a Trademark Officer looks into your application and is in the capacity to "object" your application for many numbers of reasons.
You can check the status on your applied trademark on the Indian Trade Mark Registry website. If the status shows as "objected", then it is to be concluded that you need to take action because the officer has raised concerns about your application under Sections 9 and 11 of the Trademarks Act.
There are many reasons why your application may be objected. Here, in this article, we have look at the most common ones.
You have not used the correct Trademark form
Filing trademark can be quite a hassle, despite the government making sure that such is not the case. In case you happen to not have used the correct Trademark form, your application stands to be objected by the Trademark Examiner.
The objection that will be raised is: "The application is made on form TM-1, for certification mark in respect of goods or services falling in a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16."
The means to tend to this objection is by filing in a request to correct the trademark application by filing in a request using form TM-16.
You have used not used the correct Trademark Applicant Name
The trademark applicant name needs to be mentioned correctly. In case you have not done so, the trademark officer is entitled to object to your application.
The objection that will be raised will be: "The application appears to have been filed in the name of a partnership firm, names of all Partners of the firm should be brought on record by filing a request form TM-16"
The applicant whose trademark application has been objected due to incorrect trademark applicant name can tend to the objection by filing in a request to correct the trademark application through form TM-16.
The Trademark Form TM-48 has not been filed by your agent
The basic thumb rule is that whenever a trademark application has been filed by a trademark attorney or a trademark agent on behalf of you, the applicant here, trademark form TM-48 has to be duly filled and attached.
In case you have forgotten to fill and attack form TM-48 or have incorrectly executed the form, the objection that will be raised by the trademark officer is: “The application has been submitted by a person other than the applicant, a duly stamped Power of Attorney in favour of a particular agent should be filed.”
As an applicant whose application has been objected, you can overcome it by filing in a request to correct your application form through form TM-16.
You have mentioned incorrect address on the trademark application
You need to be very careful in filling the trademark application form. One slight mistake in the address and the trademark can raise an objection to it.
You have to mention the principal place of business. Even if your address for the services in India is not mentioned, the application can be duly objected to.
The objection raised will be: “The Principal Place of business of the applicant should be brought on record by filing a request on form TM-16” or “The applicant’s address for service in India should be brought on record by filing a request on form TM-16, since the applicant has no principal place of business in India.”
Like before, to make amends and to correct the application form after it has been objected, you need to do it through form TM-16.
You have vaguely specified goods and services
When you fill in the form, you have to be specific. If you casually specify the goods and services, or you specify something that covers a large variety of goods and services, then an objection can be raised by the trademark examiner.
Here is the objection that you will come across: “The specification of goods/services mentioned in respect of class xx, is very vague and wide. You should provide exact items in respect of which the trademark is sought to be registered, by filing a request on form TM-16.”
You need to take the corrective actions through filing in a form TM-16 and requesting for change in your original form.
If the same trademark or a similar trademark already exists
In case the trademark examiner finds same or eerily similar trademarks already in his records for the same product or products similar to the goods and services you want to trademark, your application will be objected duly.
“The trademark applied for registration is not registrable under Section 11(1) of the Trade Marks Act 1999 since identical or similar marks in respect of identical or similar description of goods or services are there on records and because of such identity or similarity of marks and goods or services there exists a likelihood of confusion on the part of the public.”
For example, if you file for a trademark "Amazone", it will be rejected because it is too similar to a trademark that exists. Such trademark applications only make things easier for the trademarks office, because they tend to mimic the famous trademarks.
In such a case, you have to frame a reply to the trademark examination report and explain how the trademarks, that have been same or similar to yours, are in effect different to the one you have applied for. And just arguments will not do. You have to submit enough evidence for the trademark officer to overturn his decision.
Your trademark lacks an exclusive character
The basic purpose of trademark is to help your goods and services stand out of the traffic in the marketplace. If your trademark name - the one you applied for - does not do justice to that, and does not help you distinguish from the clutter, it will be rejected under absolute grounds for refusal of trademarks.
For example, trademark "Shiny Hair" will be rejected as a trademark for a shampoo because all it does is define how your hair will be. It lacks the unique character that is needed to differentiate it from the rest out there.
To refute that, you will have to submit a response, with proof, how your product is unique and has a distinct character that will serve to keep trademark's USP in place.
Your trademark is deceiving
The trademark office will not let anyone fox the buying public. If your trademark has connotations of deception, where the mark itself, or the quality or nature or geographical origin of the goods or services, can be used to delude the public, the trademark application will be strictly objected.
You may use TM-16 to file for a revision but you will need strong grounds to get your application through, unless of course you have reworked the trademark you will be filing for.
There are many other reasons why your trademark application can be stalled with an objection, but the ones listed above are the most common ones.
But before we close this article, here is a little briefing about how to go about it once your application has been objected to:
Opposing a trademark is not a tedious work; in fact, anyone with legit claims can oppose a trademark. Once a trademark is under the application process, an individual or a company can file application to oppose the trademark even if he has no personal or professional interests associated with the claim. Since anyone can object to a trademark without having any personal or professional interest, the claimers bona fides is out of equation in such cases.
Reasons for opposing a trademark
The Indian Trademark Law does not cite specific reasons to oppose a trademark and hence it can vary from cases to cases. However, the common practice is to object to a trademark on various grounds like absolute grounds, relative grounds, and prohibited mark.
A trademark can only be objected within four months of its advertisement or re-advertisement in the trademark journal. The notice has to be filed along with substantial evidence in support of the application. In fact, sections 9 and 11 of the act ascribe that the application can be rejected on absolute or relative grounds.
It’s mandatory to file Form TM-5 to oppose a trademark. The fee charged for filing the opposition is 2500 Indian rupees. The form must contain some specific details like: application no., goods and services for the trademark application, and name of the applicant whose trademark is sought to be opposed
There are further details which need to be mentioned like:
The notice of the opposition must be signed by the individual who is opposing it or by someone who has a complete know how of the facts of the case. The person signing should refer to the number of paragraphs of the notice along with the date and place where the notice is signed.
Within two months from the date of receipt of opposition, the registrar shall produce a copy of the notice of opposition to the applicant whose mark has been opposed.
After having received the copy, the applicant of the opposed mark shall produce counter statement within two months. This counter statement has to be evidenced with proper proofs on substantial grounds.
In case of the applicant failing to provide a counter statement within the stipulated time, the trademark shall be deemed abandoned.
After hearing the arguments of both parties and going through evidences, the registrar decides whether the trademark will be accepted or not. However, registrar’s decision is not final and can very well be challenged by the party at the receiving end of the verdict by filing an appeal before the Intellectual Property Appellate Board.
A trademark can be objected on various grounds and reasons, through this article we would discuss some of the major reasons which lead to objection of a particular trade mark
Soon after the application for the trade mark is filed, the trader mark examiner goes through the application and also looks for earlier trademarks which are identical to the one being applied for. Once he is done with the screening process, he files the report termed as trade mark examination report.
One of the most common mistakes while filing a trade mark is the use of incorrect form. If the trade mark application is not made on a proper form, the trade mark examiner raises the objection at the preliminary level. Once the trade mark examiner advises on the correct use of the form, the applicant can overcome the discrepancy by filing a request via form TM-16.
Missing out on filing Trademark form TM-48
In case of a trademark application filed by Trademark attorney or Trademark agent on behalf of the applicant, it is mandatory to include the TM-48 form. On occasions, when the said form is not attached, the Trademark examiner advises to attach a duly signed Power of Attorney in favour of the agent. Even in this case, the corrective measure is ensured by requesting to correct the application by filing a TM-16 form.
If the applicant has not mentioned the place of business or if the applicant’s address for services in India (when the foreign party is involved) is not mentioned, the examiner swings into action and raises the objection. He may advise the applicant to bring to record the principal place of business by filing the form TM-16
Convoluted specification of goods and services
The services for which the trademark is sought need to be very specific and explained in detail for the trademark examiner to make an appropriate decision. If the applicant fails to do so and appears to have provided a vague description of his services encompassing a lot of unnecessary details, the trademark examiner is expected to raise his objection. The corrective measure involves filing the form TM-16 requesting to change the original application.
Same or similar trademark
Now this is one of the most important points. In case there is a similar or same trademark already in the market, the objection is raised by the trademark examiner. He may cite sections of the Trademark act to make the applicant understand the discrepancy better. Section 11 (1) of the Trademark Act 1999 clearly states that since similar or identical marks are already there on the record, the new mark may create confusion in the minds of public. If the applicant is confident of the originality of the trademark, he can reply to the examination report by saying that the marks mentioned in the report are different than the one filed by him. However, all his claims must be evidenced by substantial proofs.
Lacking distinctive character
If the trademark does not have the distinctive character to differentiate it from the goods and services provided by some other company or individual, it is liable to be objected. If the applicant thinks that the mark has distinctive features, he can object the absolute grounds for refusal of mark by filing an application and proof that the mark has established a distinctive feature due to its previous use.
A trademark examiner can raise objection if he thinks that the mark is potentially deceptive due to its nature, use or the products and services it is trying to sale. If the applicant wants to overcome the issue, he will have to file form TM-16 seeking to exclude goods and services from the specifications.
A trademark is a sign, symbol, word, or words registered or legalized for the use of representation of a company’s product or services. Hence, any tamper or illegal use of this trademark by any other company it does not belong to, gives the authorized company the right to legal action – making trademark of a company the most important feature of its existence.
Once a company is formed, it must register its trademark with the Registrar, which is valid for ten years only, as it has it own benefits.
Broadly there are trademarks can be categorized into two kinds – the registered trademarks and the unregistered trademarks.
Registered Trademarks and Unregistered Trademarks
Despite the common law benefits that an unregistered trademark possesses, it is highly advisable to register the trademark to gain the legal benefits in case of any infringement or theft. A registered trademark gives the user or then owner the competitive edge and stands high chance of favor from the law.
Trademark application are generally objected, if your application contains any of grounds as prescribed under section 9 and section 11 of Trade Mark Act, 1999. These duo sections deal with absolute and relative grounds on the basis of which a trade mark application can be objected.
Let’s understand these grounds piece by piece which are as follows:
When the application for the Trade Mark registration is filed, then the Registrar or examiner verifies the application on the basis of different aspects as follows:
2. Absolute and Relative ground: If Trade Mark is devoid of ant distinctive character, then this should be considered as relative ground for the refusal of Trade Mark.
Similarly, if the mark is such that there is possibility of creating confusion caused to the public with an existing mark, this is considered to be relative ground to the refusal of trade mark.
3 Conditions: Imposing some conditions or restriction on Trademark.
Importance of Annual Filing
Company is a legal entity made up of association of…
Legal Requirements for Company Registration
Company incorporation is ideal process for every Business firm. It…
Maintenance of Minutes of a Company
Minutes is record of meeting or any official hearing in…