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Trademark Objection

What Is Trademark Objection?

A trademark is any logo, symbol, tag or combination of the two that represents the identity of a trademark. Often, during the registration process of a trademark, the Trademark Registrar raises objections to the intended trademark if it is found to be in violation of trademark rules and laws. It could be due to a number of reasons, such as similarity to any existing trademark; offensive and damaging the sentiments of a particular religion or a fringe group; lack of a distinct design; etc. In the event of a trademark objection, you must file a reply to a comprehensive trademark objection within one month from the date of issue of the objection.

Your application will be examined by the designated Trademark Examiner pursuant to the various sections of the Trademark Act. The Trademark Examiner shall determine whether the mark is relevant to your goods / services and shall be distinct enough not to create confusion with an identical mark licensed earlier by some other party.

If the application is found to be satisfactory, the Registrar will accept and issue an order of acceptance for the publication of the trade mark in the Trademark Journal, otherwise it will be objected to and a trade mark examination report will be issued. The report sets out the grounds for opposition to a trademark, such as the existence of a conflicting mark; or that the trademark is non-distinctive, etc.

Reasons For Responding To A Trademark Objection

  • The current trademark will be rescued from being abandoned or denied and will be regarded for any further processing.

  • When the response is well stated, citing the uniqueness of the mark, there is a high possibility of it being registered. The company may soon enjoy the advantages of the registered trade mark and thus protect the trade mark against infringement.

  • Some companies are starting to use the TM mark while still waiting for the Trademark Registration Report. Customers would also begin to recognize the brand and it would be illogical for the company to reapply as a new entrant. It is therefore best to file an appeal against the Registrar against the trade mark and to win back the trade mark.

Trademark Objection Response Procedure

  • The first step involves carefully analysing and studying the objections, since any confusion in the understanding may lead to an incorrect filing of the trade mark objection.

  • Next step is to draw up a reply, that should include the following:

    • A correct answer to the objection raised in assistance of the rule of law and the precedents and judgments supporting the case

    • The differences between the aforementioned conflicting trade mark and the applicant's trade mark.

    • Other assisting documents and evidence validating the reply

    • An affidavit stating the use of the trademark on the applicant's website and social media channels; advertising in the media; advertising material; availability of trademarked products on e-commerce sites, etc., along with documentary evidence for the same purpose.

  • If the reply is accepted, the application will be further processed for registration and advertising in the Trademark Journal. If it is not accepted or additional clarifications are sought by the Trademark Examiner, a hearing on the trademark would be scheduled and the same would be notified by a hearing.

  • Publication (Trademark Journal): If the result of the hearing is positive, the trademark will be acknowledged and commanded to be published in the Trademark Journal. In the event of a negative outcome, the Refusal Order will be issued informing the applicant of the grounds for refusal and it would still be possible to appeal the order by filing the Refusal Order, within 30 days of the date of the Refusal Order, stating the grounds on which the order must be reviewed.

  • Once your trademark has been published in the Trademark Journal, it will be accessible to opposition for a time span of 4 months. If no third party oppositions have been filed within the said 4 months, the trademark shall proceed to registering and the registration certificate shall be issued.

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