Trademark Objection in India
Reasons, Reply Process & Important Tips
It is very important to understand that registering a trademark (“TM”) is one of the most important steps in order to build and protect a brand. It doesn’t matter whether you are a startup founder, entrepreneur, freelancer, or established business owner; securing a TM helps protect your brand identity from misuse and infringement. However, many applicants filing for TM gets to know about objection when they receive a TM objection from the Trademark Registry after they file TM application.
The best part is that TM objection is not the end of the registration process. In most of the cases, objections can be successfully overcome by submitting a well-drafted response along with supporting evidence.
What is a Trademark Objection?
A TM objection is an official examination report issued by the Trademark Registrar when they see certain concerns during the examination of a TM application. It is important to be clear that an objection is not a rejection. Rather, it is an opportunity which is given to the applicant in order to justify why the TM application should proceed to registration despite the concerns raised by the examiner.
When applicant file TM application it is important to file a response within the prescribed timeline when objection is raised by registry in the examination report. If the response is satisfactory and applicant is able to justify uniqueness, the application can move forward for publication in the TM Journal.
Passing Off Actions
Passing off is one way for businesses to protect their goodwill from being copied by other parties. A business can bring an action against another party for passing off by showing that the other party has represented their goods or services as if they belong to the original brand.
If your business is involved in a dispute and you have a competing business that is using a similar trade name or logo, using packaging that looks like yours (known as a trade dress dispute), using a domain name that is similar to yours, or falsely representing their goods or services through misleading advertising, we can help you with your case.
We carefully establish the requisite goodwill, misrepresentation, and damages that must be proven to succeed in a passing off claim.
It is important to be proactive in protecting your brand during the registration process. We help our clients with Oppositions and Rectification Proceedings before the Office of the Controller General of Patents, Designs and Trade Marks and the Intellectual Property Appellate Board (formerly known as the Intellectual Property Office).
Common Reasons for Trademark Objection in India
TM objections generally arise under the provisions of the Trade Marks Act, 1999. The objections can be categorised into two broad categories, which are absolute grounds and relative grounds.
- Lack of Uniqueness
One of the most common reasons for the objection of TM is that the sometimes TM lacks distinctiveness and uniqueness of a mark. The basic idea behind TM is that TM must be capable of distinguishing the goods or services of one business from those of others so that public do not get confused. Generic, descriptive, or commonly used words are often objected by the TM registry because they do not uniquely distinguish the source of goods or services.
It is important to understand that TMs merely describe the nature, quality, or characteristic of the products/brand and which may not necessarily qualify for registration if it lacks without distinctiveness.
- Similarity with an Existing Trademark
The other reason could also be if TM is identical or deceptively similar to an already registered or pending TM. For an instance, if applicant applies for the very common mark which is let’s say “AMAZONN” and for similar kind of services to those offered under the well-known mark “AMAZON,” in such case an objection is likely to be raised by TM registry and reason of that objection is to prevent confusion in the mind of consumer and protect the rights of existing TM owners/proprietors.
- Descriptive or Generic Terms
A TM which invariably describes the quality, nature and also the intended purpose, geographical origin, or characteristic of goods and services may face objection. For instance, “Sweet Bakery” TM is filed and description of goods is bakery products and “Fresh Milk” TM is filed covering dairy products. Since such terms are commonly used by anyone under this trade, giving exclusive rights over such generic terms unfairly restrict competition in the market, thereby leading to objection.
- Misleading or Deceptive Marks
TM which are likely to mislead consumers regarding its nature, quality, or geographical origin of goods and services may be objected by TM registry. For example, using “Organic” term as a TM for goods that are not organic or using a geographical indication without authorisation is also not allowed. By this TM Registry aims to protect consumers from deceptive business practices.
- Use of Prohibited or Offensive Content
TM which contains or revolves around offensive words, religious sentiments, national symbols, government emblems, or prohibited elements may attract objections. Businesses should carefully review their TM and brand name in order to ensure compliance with Indian TM laws before filing any application for registration of TM.
- Incorrect Trademark Classification
Sometimes objections may also arise because the goods or services have been filed under the wrong TM class or the specification provided is vague and unclear, this could also be the reason why TM registration could come for objection. A proper classification search by TM attorney before TM filing can help avoid such issues.
Now Let’s understand How to Check a Trademark Objection?
Once the application is under examination, the TM Registry issues an Examination Report.
Applicants can check the status by:
- Visiting the official IP India TM portal.
- Entering the TM application number.
- Downloading the examination report.
- Reviewing the objections raised by the examiner.
Timely review allows applicants to prepare a timely and effective response, thereby justifying the TM application.
Let’s understand Trademark Objection Reply Process
Responding effectively to a TM objection raised by registry is crucial and should take place in a very structured way. A weak or incomplete response can lead to abandonment of the application for registration of TM. So lets breakdown this into steps: –
Step 1: Analyse the Examination Report
Primarily understanding and Careful study of every objection mentioned in the examination report is very crucial. The examiner usually raises objections under TM Act and provides reasons for the objection. Understanding the basis of the objection is the first step toward preparing an effective response.
Step 2: Gather Supporting Documents
Supporting documents are gathered according to the nature of the objection which may include user affidavit, sales invoices, advertising and promotional materials, website screenshots, social media presence, business registrations, market recognition evidence
These documents help in establishing prior use and support distinctiveness, and goodwill associated with the TM.
Step 3: Draft a Detailed Reply
It is very important that the reply should address each objection separately by explaining why the trademark is distinctive, highlighting differences from cited marks and include relevant legal arguments thereby supporting TM application. The reply should also attach supporting evidence mentioned above. The language should be professional, clear, and legally sound.
Step 4: File the Reply
The response to objection must be submitted online through the trademark registry portal within the prescribed period. Timely filing is very essential because sometimes failure to respond on time may result in the application being marked as abandoned.
Step 5: Attend Hearing (If Required)
In some cases, the examiner of response may not be fully satisfied by the written response submitted by the applicant and in such cases, hearing may be scheduled. During the hearing the applicant or authorized attorney presents arguments by submitting additional evidence and addressing the queries raised by the examiner. A well-prepared hearing can significantly improve the chances of overcoming the objection.
With the increasing prevalence of a digital global economy, the nature of trademark conflicts has become more than just traditional marketplace disputes, but now, also include e-commerce sites, social media platforms, online marketplaces, and domain names, among other things. Companies are now confronted with more complex types of acts of trademark infringement such as
- keyword advertising infringement
- cybersquatting
- meta-tagging, and
- unauthorized listings on Third Party Platforms.
Our trademark litigation practice is set up to assist our clients in accessing a solution to the problems created by modern trademark infringements quickly and correctly. We help our clients identify instances of infringement through conducting market research and digital monitoring; gathering electronic admissible evidence; and filing lawsuits in competent court jurisdictions under the provisions of the Trade Marks Act 1999.
In cases, we work with intermediaries and/or online platforms to ensure the expeditious removal of infringing content that meets the requirements of applicable Information Technology regulations. Our attorneys recognize that brand dilution can occur in less than obvious ways such as through similarities or other forms of unfair and/or dishonest behaviour in relation to the unlawful misuse of trade marks.
Important Tips for Successfully Responding to a Trademark Objection
Conduct a Thorough Trademark Search Before Filing
Many objections can be avoided by conducting a comprehensive TM search by professional attorney before filing the TM application. This helps identify similar existing trademarks and allows businesses to select a stronger and more distinctive brand name.
Choosing a unique brand name is very important so choose a TM which has invented or coined words as these generally face fewer objections than descriptive terms. If you see “Google”, “Kodak”, “Xerox” are such marks that are inherently distinctive and easier to protect.
FAQs About Trademark Objection in India
1. What is a trademark objection in India?
A trademark objection is an objection raised by the Trademark Registry during examination of a trademark application. The objection is generally communicated through an Examination Report and may relate to issues such as lack of distinctiveness, similarity with an existing trademark, or other legal or procedural requirements.
2. What are the common reasons for trademark objections?
Common reasons include lack of distinctiveness, descriptive or generic marks, similarity with an earlier trademark, incorrect classification, and other issues under the Trade Marks Act and Rules. The exact ground depends on the contents of the Examination Report.
3. How do I reply to a trademark objection in India?
The applicant should review the Examination Report and submit a suitable reply addressing each objection with appropriate legal grounds and supporting documents, where required. If the Registrar is not satisfied with the response, a hearing may be scheduled.
4. What is the time limit to reply to a trademark objection?
Under Rule 33 of the Trade Marks Rules, 2017, the applicant generally has one month from the date of receipt of the Examination Report to submit a response. If no response is submitted within the prescribed period, the Registrar may treat the application as abandoned.
5. Can a trademark objection be removed?
Yes. A properly prepared response can address the Registry’s objections and may result in the application proceeding toward acceptance. Depending on the objection, supporting evidence, documents, or a hearing may also be necessary.
6. What happens after filing a reply to the Examination Report?
The Trademark Registry considers the reply and supporting documents. If the objections are satisfactorily addressed, the application may be accepted and proceed toward publication in the Trade Marks Journal. If the response is not satisfactory, the Registrar may provide an opportunity for a hearing.
7. Is a hearing required for every trademark objection?
No. A hearing is not necessarily required for every objection. If the Registry is satisfied with the written response, the application may proceed without a hearing. A hearing may be scheduled when the objection remains unresolved or the Registrar requires further submissions.
8. What documents can support a trademark objection reply?
Depending on the objection, supporting material may include evidence of trademark use, invoices, advertisements, business documents, packaging, website or social-media evidence, and other relevant documents. The appropriate evidence depends on the grounds raised in the Examination Report.
9. What happens if I do not reply to a trademark objection?
If the applicant does not respond within the prescribed period, the Registrar may treat the trademark application as abandoned. Therefore, it is important to monitor the application status and respond within the applicable deadline.
10. Is trademark objection the same as trademark opposition?
No. A trademark objection is generally raised by the Trademark Registry during examination of the application. A trademark opposition is filed by a third party after the trademark application is published in the Trade Marks Journal. The two are separate stages of the registration process.
11. Can I get professional help for a trademark objection?
Yes. A trademark professional or lawyer can review the Examination Report, identify the grounds of objection, prepare an appropriate response, and represent the applicant if a hearing is scheduled.
12. Does a trademark objection mean that my trademark cannot be registered?
No. An objection does not automatically mean rejection. The applicant has an opportunity to respond to the objections and, where applicable, present arguments and evidence before the Registrar.