INTRODUCTION

Trademarks are identifiable expressions, words, or symbols that identify a particular good and set it apart from all other goods of the same sort legally. Companies utilize trademarks, a crucial piece of intellectual property, to set their brands apart from those of rivals in the marketplace. Words and design components of a product or service are identified and protected by trademarks. The Trademark Act, of 1999 focuses on regulating trademarks and prescribing procedures for registration of the same in India.

It is important to note that the trademark objection process can be lengthy, and it requires patience and persistence to overcome the objections. With the above steps, you can increase your chances of successfully registering your trademark.

Before allowing trademark registration, a trademark registration application may be contested. The terms "trademark objection" and "trademark oppositions" are occasionally used interchangeably by confused persons. These terms, however, are not the same. Both trademark opposition and trademark objection follow completely different processes.

Objection:

At the initial stage of the registration process, an applicant will encounter trademark objections. When reviewing the application, the registrar brings up objections. The application is examined by the Registrar, who then identifies any grounds for denial under Sections 9 and 11 of the Trademarks Act. Section 9 of the Act provides absolute grounds for registration of the said trademark and Section 11 provides relative grounds for registration of the said trademark.

The grounds for refusal provided under section 9 are as follows;

• If the mark is devoid of distinctive character
• If the mark reflects the characteristics of goods or services produced or rendered respectively
• If the mark contains any customary indications
• If the mark is capable of confusing the market
• If the mark is religiously susceptible
• If the mark is scandalous or obscene in nature
• If the mark is violative of any provisions under the Emblems and Names Act 1950.

Grounds for refusal provided under section 11:

• It resembles the earlier trademark in certain ways.
• In comparison to the earlier trademark that applied to a certain class of goods and services, it conveys the same visual appeal. People may become confused as a result of this.
• Trademarks that could potentially harm the previously well-known trademark in India
• A trademark that has negative characteristics that could undermine the distinctiveness of a related, widely used brand in India
• The use of the trademark is constrained by the illegal passing-off statute that protects the unregistered trademark in the industry.
• The Copyright Law forbids using the trademark in any way.
• If the prior owner of the trademark objects to the opposition processes, the refusal of registration is not conceivable for the trademarks specified in Sections 11(2) and 11(3).

Dealing with the objection:

Trademark objections under Sections 9 and 11 of the Trademark Act, 1999 can be a challenging and time-consuming process. However, by following the correct procedures and taking the right steps, it is possible to overcome the objections and successfully register your trademark. Here are some general steps to handle trademark objections:

1. Understand the grounds of objection: When you receive a trademark objection notice, carefully read and understand the grounds of the objection. Trademark objections can be raised on several grounds, including similarity with an existing trademark, lack of distinctiveness, or use of generic words.
2. Prepare a response: Once you understand the grounds of objection, prepare a detailed response that addresses each objection. Your response should include relevant evidence, arguments, and legal precedents to support your case.
3. File a reply: Submit your response along with relevant documents to the trademark office within the stipulated time frame. The response must be filed in the prescribed format and should be signed by the authorized signatory.
4. Attend hearing: In some cases, a hearing may be scheduled to hear both parties and review evidence submitted by both sides. Attend the hearing and present your case effectively.
5. Appeal: If your trademark is still rejected after the hearing, you can appeal the decision with the Intellectual Property Appellate Board (IPAB). The appeal must be filed within three months of the decision.
6. Seek professional help: If you find the process overwhelming or lack legal expertise, it is advisable to seek the help of a trademark attorney who can guide you through the process.

The applicant will be given reasonable notice of the objection and the grounds for it once the Registrar has lodged one. The primary responsibility of the Applicant is to present a response to the Registry. Once the applicant receives the examination report, the applicant has one month to complete this. The application will get abandoned if no objection is submitted within a month.

Upon receipt of the counter, the Registrar may request a hearing; if he decides in the applicant's favor, the trademark will be registered. The trademark will be taken down from the Journal and the registration request will be denied if he rules in favor of the opposing party. The applicant may now appeal the decision to the Intellectual Property Appellate Board (IPAB).

The IPAB will hear the case after it is registered. Rule 2(m) states that the jurisdiction in which the case falls shall determine the location of the hearing. A time for the case hearing will be announced. The hearing will proceed accordingly.

Based on the arguments put out by the two sides, the IPAB will decide the case.

The IPAB has the following options if a party does not show up for the hearing:

• Determine the case's merits.
• Give an ex parte order (in the absence of one party)
• Reject the case

A petition against the earlier order may be filed within 30 days after the date of the ruling if the case is dismissed or decided ex parte. The case will be heard, and the IPAB's decision will remain in effect. The applicant still has the choice to submit an appeal to the High Court with competent jurisdiction if he is unhappy with the order made by the IPAB. Moreover, subsequent appeals may be brought before the Indian Supreme Court.

Oppositions:

According to Indian trademark law, "any individual" may contest a trademark (under Section 21 of the Act). According to the guidelines established in P.N. Mayor v. Registrar of Trademarks (AIR 1969 Cal 80), "any person" may object to the registration of a trademark based on probable deception or confusion. This does not necessarily mean that "any person" must be the previous registered trademark owner. As a result, there is no restriction on who may oppose a trademark application, and the Registrar simply weighs the merits of the opposition rather than the opposition's motivation. The grounds for the opposition to a trademark are the same as the grounds for refusal of a trademark.

Dealing with the opposition under Section 21 of the Trademark Act :

Opposition under Section 21 of the Trademark Act, 1999 is a legal proceeding initiated by a third party to object to the registration of a trademark application. The third party must file a notice of opposition within four months from the date of publication of the trademark application in the Trademark Journal. Here are some general steps to handle opposition under Section 21 of the Trademark Act:

1. Analyze the notice of opposition: When you receive a notice of opposition, carefully analyze the grounds of opposition raised by the third party. The opposition may be based on similarity with an existing trademark, lack of distinctiveness, or use of generic words, among other things.
2. Prepare a counter-statement: Once you understand the grounds of opposition, prepare a detailed counter-statement that addresses each ground of opposition. Your counter-statement should include relevant evidence, arguments, and legal precedents to support your case.
3. File a counter-statement: Submit your counter-statement along with relevant documents to the trademark office within two months from the date of receipt of the notice of opposition. The counter-statement must be filed in the prescribed format and should be signed by the authorized signatory.
4. Attend hearing: In some cases, a hearing may be scheduled to hear both parties and review evidence submitted by both sides. Attend the hearing and present your case effectively.
5. Appeal: If your trademark is still opposed after the hearing, you can appeal the decision with the Intellectual Property Appellate Board (IPAB). The appeal must be filed within three months of the decision.
6. Seek professional help: If you find the process overwhelming or lack legal expertise, it is advisable to seek the help of a trademark attorney who can guide you through the process.

It is important to note that the opposition process can be lengthy, and it requires patience and persistence to overcome objections.