How to overcome Office objection in Trademark?

Introduction

Trademark is one of the intellectual property rights. Intellectual property rights are those rights which provide a protection to people for their ownership rights of their innovative and creative product. Section 2(zb) of the Trademarks Act 1999, provides for the definition of trademarks. Trademarks as per the act is the mark capable of being represented graphically, capable of being distinguished from goods or services of one person and may include shape of goods, packaging or combination of colours.

Registration of Trademarks

Any person claiming to be the proprietor can apply for the registration of a trademark. Trade Marks Rules, 2002 prescribe the procedure for application of trade marks. Usually trade mark registration takes place 2-3 years in India unless it isn’t opposed by the third party. Section 21 provides for the grounds of opposition of trademark.

Any person within four months from date of advertisement of an application can give notice to Registrar along with fees prescribed of opposition of Registration. The Registrar will send copy to applicant within 2 months from receipt by applicant of notice of opposition, applicant shall send a counter statement on which he relies for his application.

Any evidence upon which opponent and applicant may rely shall be submitted to Registrar and Registrar shall give an opportunity to get them heard. Registrar after hearing shall decide registration to be permitted may take into account found of objection whether relied upon by opponent or not.

Where a person giving notice of opposition or counter-statement after receipt of copy of notice, neither resides in India, Registrar may require him to give security for costs of proceedings and may further treat his application as abandoned. Registrar on request may permit a correction in the notice or in the counter-statement[1].  

Trademark Objection

Trademark objection is defined as the obstacle a lawyer or a trademark agent may encounter while applying for the application of a trademark. Objection can be raised by the examiner at the trademark registry office to the applicant and further he can put the legal elements to question to object the registration of a trademark.

Grounds for Refusal to Registration

Section 9(1) to (3) of the Act provides about the absolute grounds under which registration of a trademark can be refused. A trade mark shall not be refused to registration if it is found to be of distinct character.

Relative Grounds for refusal to registration

Relative grounds for refusal of trademark registration are embedded in Section 11 of the Trademarks Act. Section 11 of the Act refers to a scenario where there exists any sort of confusion on part of the public as of the identity with an earlier trade mark is a well- known trademark or similarity in goods or services, the trade will not be registered. Furthermore the registration of a trade mark which is merely reproduction or imitation of a well-known mark is also prohibited.

These grounds are relative in the context that the Registrar may or may not refuse the Registration.

Case Laws

Superon Schweiss Technik India v. Modi Hi-Tech India Ltd. [(2018) 250 DLT 308]

Facts of the case:

The Plaintiff is engaged in manufacturing of fire suppression system coatings, fire barriers etc. Plaintiff is claimed to be the owner of the Trademark SUPERON with another trademark VAC PAC used in manufacturing and selling of welding electrodes. The Defendant also engaged in same line of business and claimed to be owner of Trademark GMM/arc with the word VAC PAC.

Plaintiff alleged that Defendant has dishonestly adopted an identical trademark VAC-PAC for same goods as that of plaintiffs such as welding electrodes. Hence plaintiff filed a suit before the court claiming: permanent injunction to restrain defendants from infringing their mark “VAC-PAC”, delivery up of impugned products by the defendants, an order of rendition of account of the defendant by their trade activities and damages amounting to Rs.1,00,00,001

Issues: Whether Defendant’s act of using the words VAC PAC leads to passing off the Plaintiff’s Trademark?

Laws Applicable: Section 9(1)(a) of Trade Marks Act (absolute grounds for refusal of registration)

Section 11(3)(a) of Trade Marks Act (relative grounds for refusal of registration)

Judgment:

The Delhi High Court dismissed the suit on grounds:

1. The Plaintiff’s main trademark is SUPERON with an added word VAC PAC, whereas the Defendant’s main trademark is totally different being GMM/arc with the use of work VAC PAC. Therefore, there is no identical characteristic on the Trademarks of both the parties.
2. The case of infringement and passing off are dealt differently. The present case, the court has to observe the trademarks as well as the packaging of both the parties, unlike the case of infringement. Thus on examining, the court found that defendants cannot be said to have pass off the Plaintiff’s trademark.
3. The court inclined to dismiss the  suit with actual costs wherein Defendants were instructed to file the affidavit with actual costs and Plaintiff were ordered to pay the same to the Defendants. As of court’s opinion, suit abused the process, additional cost of Rs.50,000 was imposed on the Plaintiff[2].

Reply to the Examination Report

Upon receiving of the examination report, the applicant needs to file reply to the same within a stipulated time which is generally one month from date of issuance of examination report. The response can be explained separately depending on each and every objection raised by the examiner. Finally the needs to be submitted through online means via mail by attaching a scanned copy in PDF format to parm.tmr@nic.in. Another way of submitting of the response can be in person to the officer of the relevant post in the office. In case applicant fails to file the response within the stipulated time, it would lead to the abandonment of the trademark by the Registry.

How to draft the response of an examination report

There is no common and uniform procedure to draft response of an application form, however the draft must include some necessary information that is:

1. A brief introduction of the case which outlines the stages and timeline of the case till latest events;
2. Pointwise reply to the objections asked by the examiner;
3. Case laws and precedents related to the case;
4. Documents supporting the uniqueness of the trademark;
5. Affidavit of usage.

Steps to avoid Trademark Objections:

1. Trademark Search: one of the efficient ways to avoid trademark objections at most is to conduct trademark search. The applicant or applicant’s attorney must conduct a trademark search in order to find whether there are marks identical to previous marks or similar to the mark for which registration is sought.
2. Arbitrary names: another key tip one can follow to avoid trademark objections is to avoid usage of common trademark names. A unique or arbitrary mark is good in comparison with the common names.
3. Avoid descriptive names: another way of avoiding trademark objections is to avoid usage of descriptive names along with the trade of business. For instance usage of name “bakery” along with the mark will eventually attract section 9 objections.
4. Avoid combination of well-known marks: another aspect one can take into consideration is to avoid combination of well-known trade marks. For instance one can avoid Google electronics or Flipkart sockets as both Google and Flipkart are popular brands and using of their names will eventually attract trademark objections.
5. Avoid clerical errors: One of the common mistakes done while submission of application of trademark is the clerical errors. Before submission of an application for registration of trademark one must be satisfied and prudent with the information submitted to the Registrar.

Conclusion

As there are large number of trademark registrations take place in India, trademark objections are common in the Indian sphere. As soon as the applicant receives objection on its trademark, he/she must file reply within one month from receiving of Trade marks Registry. Delay in the same would lead to the abandonment of the applied mark. One must be very efficient in avoiding common names, combination of well-known names, while registering an application for trademark.  

SUBMITTED BY : MUNIS NASIR