How to overcome Office Objections in Trademarks?

Trademark is a unique identity of a business or company. It is one of the most valuable intellectual property which distinguishes its goods and services from the rest of the world. The Trademark is the carrier of brand image and reputation in the local jurisdiction and abroad. Trademark registration is the most essential part of enforcing it. Any person as specified in Section 18 (1) of the Trademark Act,1999 can apply for a trademark by submitting an application in the office of the Trade Marks Registry with the help of a lawyer or a trademark agent. Trademark objection is the first impediment in getting one’s mark registered.

Trademark Registration is a step by step process and Trademark objection is an objection raised by the examiner of the trademark registry office to the applicant stating that the trademark in question has legal impediments and thus cannot be registered as a trademark. It may take place after the applicant has duly submitted its application with an application fee.

Examination Report

An applicant has to file his/her application for trademark registration in an appropriate jurisdiction. For example, A business established in Mumbai has to file its application with the Mumbai trademark office. Once the application is filed with the trademark registrar, it will undergo a scrutiny process by the Examiner/ Registrar. This is done within the examiner looks at the application in detail and inspects the application as to whether:

1. The application is filed following the Trademarks Rule 2017.

2. The application contains incomplete/wrong information.

3. There is already a similar trademark(s) in existence.

4. The trademark application can be refused for registration on grounds of Absolute and/or Relative grounds as prescribed under Section 9 (Absolute Grounds of Refusal) and 11 (Relative Grounds of Refusal) of the Trademarks Act, 1999, if yes, the reasons; and

5. Any restriction, condition, or limitation that is necessary to be imposed; in case the application is accepted for registration.

An Examination Report is issued by the examiner if the application does not fulfill any of the aforementioned requisites. If the application satisfies all the requirements, then the registry issues an acceptance order and publish it in the journal for opposition by a third party. It takes about 1 month for the registry to issue an Examination Report, thus it is advisable to check the status of the application every 15-20 days.

How to overcome Trademark Objection?

Once a trademark examination report reaches the applicant, the applicant is required to reply within 30 days. This document may be known as a trademark examination report reply. Objections raised by the examiner or the trademark registrar is based on various grounds mentioned above. The objections have to be tackled differently for different issues. The following are the types of possible objections and the respective remedies possible :

1. Objection based on incorrect classification: Objection stating that none of the goods or services mentioned in the application fall in the respective trademark class and objection based on the fact that some of the goods and services mentioned in the application do not fall in the trademark class are the two instances based on which an application is objected for incorrect classification.

In this case, the trademark applicant may file a request to correct the class of goods or assert in the form of a statement that the classification of goods and services are following the classification published by the registrar.

2. Objection based on Absolute grounds: Section 9 mentions the absolute grounds based on which trademark registration can be objected to. It includes descriptive marks, suggestive marks, etc. For example, the mark “Bed-Sheets” can be a subject of objection on absolute grounds for a company selling bed-sheets. To overcome the absolute grounds of objections the applicant can reply to the examination report proving that the mark establishes the following -

1. 1. Distinctiveness (The applicant can prove how the mark is not descriptive but distinct to the nature of goods or services)

   2. Arbitrariness (The applicant must establish that the name or mark has no connection or meaning related to the goods and services)

   3. Prior Use (Prior use is can support the argument to prove that the mark has an associated recognition to the business)

3. Objection based on relative grounds: Section 11 of the trademark act mentions the relative grounds based on which a trademark can be objected to. It says that a mark can be refused based on the similarity of the goods and services with earlier trademarks and the likelihood of confusion of the public and also an association of the mark with the earlier trademark. To overcome this objection based on relative ground one must focus on the following:

   1. One must include the arguments to prove the dissimilarity of the said mark and the earlier mark.

   2. The goods and services if pertained to a different class concerning the earlier mark based on which the objection is raised. The applicant can state that though there is a similarity in the name however they belong to two different classes therefore the mark is incapable of confusing the public or the customer base of the earlier trademark.

4. Objections based on formal requirements: Objections based on formal requirements are raised by the examiner when there is a clerical error or the registrar requires additional relevant documents to support the application. For example, if the registrar has asked to attach Form TM-48, the applicant must attach the same. Similarly, all clerical requirements are in general covered in this type of objection and the applicant has to comply with the same to get the registration of the Trademark.

In general practice it is seen that the following are the top reasons for Objection to Trademarks by the examiners:

1. Incorrect Trademark Applicant Name(especially in case of partnership firms)

2. Failure to File Trademark Form TM-48 (In case of application is filed by a Trademark Attorney or Trademark Agent )

3. Vague Specification of Goods or Services(In case of a large variety of contrasting goods and services in a class)

4. Similar Trademark Already Exists

5. Trademark Lacks Distinctive Character

6. Trademark is Deceptive

Reply to Examination Report

Comprehensive replies to the examination report along with supporting documents are the key to overcome the office objections most of the time. The response should not only contain blanket denials. Each objection must be denied along with justification through supporting arguments and documents. Mentioning of the case laws plays a very important role in the reply to the examiner. Also focusing on the smaller details raised during the examination process can make a better draft and thus help to overcome office objections.

Trademark objection by the Examiner is the first and most important impediment in the process of Trademark registration. Addressing the issue needs very technical and legal knowledge about the business and the Trademark. A knowledgeable lawyer can help in making a Trademark registration process smoother by convincing the Examiner of the relevance of the Trademark for the business.

BY-

ANKITA PARIDA