Trademark registration is a type of intellectual property protection, under which a word or visual symbol used by a business to distinguish it goods or services from other similar goods or services originating from a different business can be protected. To register a trademark, a trademark application must be filed by the applicant with the relevant Trade Mark Registrar in the prescribed format. Once a trademark application is filed, the Trade Marks Registrar would process the application and issue an Examination Report. Among the outcomes, the Trademark Examination Report could allow for the trademark application to be advertised before registration or the Trademark Examiner could raise an objection for registration of the mark.
In cases wherein the Trade Mark Registrar raises an objection for registration of a trademark, the applicant has an opportunity to submit a written reply for the objection raised within 30 days. The reply to the Trademark Examination Report should contain reasons, facts and evidence as to why the mark should be registered in favour of the applicant along with supporting evidence if any. If the Trademark Examiner finds the reply sufficient and addresses all the concerns raised by him/her in the Examination Report, the application would be allowed to be published in the Trademark Journal, before registration.
Once a trademark registration application is submitted and examined by a Trademark Officer, a trademark examination report is sent to the trademark applicant or the person authorised by the trademark applicant. The trademark examination report is also put up on the trademark office website along with details of the trademark application. The applicant or the authorised agent then has a chance to submit a reply to the trademark examination report with a rebuttal, if there is an objection by the trademark examiner. The response is then considered, and if the objections can be waived on the basis of the applicant's response, the trademark application is accepted for registration, and the trademark is published in the trademark journal.
The response to an objection in a trademark examination report can be submitted by the trademark applicant or by an agent authorised by the trademark applicant as the "Reply to Examination Report". The response can be submitted online through the trademark office website or could also be submitted by person or post. Any affidavit and supporting documents should also be submitted along with the Reply to Examination Report.
In case of objections as to formality requirement(s), the trademark applicant should comply with the requirements as desired by the office. For example, if the trademark office has called for consent of a person whose portrait appears on the trademark, the trademark applicant may submit the consent from the person in writing with supporting documents or state that portrait appearing on the trademark is not of a particular person, but is a general picture of a man or woman.
In case of objection due to the goods or services mentioned in the application do not fall in the correct trademark class, the trademark applicant may file a request for correcting the class or state that as per classification of goods or services published by the Registrar, goods or services have been rightly classified.
In case of objection to the effect that some goods or services mentioned in the application do not fall in the class, the applicant may file a request for amendment of the application by deleting items that do not fall in the relevant class. The applicant can also state that as per the classification of goods or services published by the Registrar, all items fall in the class mentioned in the application.
It is important to get proper legal advice as to the correct classification of goods and service, prior to submitting a Reply to Examination Report for objection as to the wrong classification of trademark class.
In case of objections as to non-distinctiveness of the trademark, the applicant can submit a reply to examination report establishing that the trademark applied for registration is capable of distinguishing the applicant's goods or services; or the trademark has acquired a distinctive character in view of its extensive use in relation to relevant goods or services, before the date of application. If the trademark has acquired distinctiveness by virtue of its extensive use, the applicant should file an affidavit as evidence of the use of the trademark along with supporting documents.
In case of objections on relative grounds of refusal because of identical or similar trademarks in respect of similar goods or services, existing on records, the applicant may submit in reply to examination report that trademarks cited as conflicting marks in the examination report are different than the applicant's trademark, along with supporting evidence. In addition, the applicant can also produce consent or no objection from the proprietor of marks cited as conflicting in the examination report.
The following are the top reasons for trademark objection:
In case the trademark application is not made on the proper form, an objection as following is raised by the Trademark Examiner.
"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."
Corrective Action: The applicant can overcome this objection by requesting to correct trademark application by filing a request on form TM -16.
The trademark applicant name must be entered properly in an application, as suggested in this article. In case of incorrect trademark applicant name, the Trademark Examiner would raise an objection as follows:
"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."
Corrective Action: The applicant can overcome an objection for incorrect trademark applicant name by requesting to correct trademark application by filing a request on form TM -16.
Whenever a trademark application is filed by a Trademark Attorney or Trademark Agent on behalf of the applicant, Trademark Form TM-48 must be attached. In case of Form TM-48 is not attached or incorrectly executed, the Trademark Examiner would raise and objection as following:
"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."
Corrective Action: The applicant can overcome an objection for failure or incorrect Form TM-48 filing by requesting to correct trademark application by filing a request on form TM -16.
In case a trademark application has not mentioned the principal place of business of the applicant, or if the applicant's address for service in India is not mentioned, then an objection can be raised as under:
"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."
Corrective Action: The applicant can overcome an objection for incorrect address by requesting to correct trademark application by filing a request on form TM -16.
In a trademark application, if the specification of goods or services is too vague or encompasses a large variety of goods and services in a class, then an objection can be raised by the Trademark Examiner as follows:
"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."
Corrective Action: The applicant can overcome an objection on the specification of goods or services by requesting to correct trademark application by filing a request on form TM -16.
In case, same or similar earlier trademarks of different trademark owner are found on records in respect of the same or similar description of goods or services; then an objection is raised as follows:
"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."
Corrective Action: The applicant can submit a reply to the trademark examination report by stating that trademarks cited as conflicting marks in the examination report are different than the applicant's trademark, along with supporting evidence.
Trademarks which are not capable of distinguishing the goods/services of one person from those of another person are devoid of distinctive character and thus liable for objection under absolute grounds for refusal of trademarks. To overcome a trademark objection under absolute grounds for refusal, the trademark applicant can submit proof to show that the mark has acquired a distinctive character by virtue of its prior use.
An objection can be raised by the Trademark Examiner, if the mark has the potential for the deception of the public by reason of something inherent in the mark itself or in its use, like nature, quality or geographical origin of the goods or services. An objection as to deceptive trademark can be overcome if the applicant seeks to exclude goods or services from the specification by filing Form TM-16.