STEP BY STEP HOW TO FILE TRADEMARK OBJECTION REPLY: FORMAT FOR TRADEMARK OBJECTION

Trademarks provide a company the right to use specified forms, symbols, and colors on its goods. The registration of a trademark necessitates meticulous preparation and execution. If you want to trademark a product in India, you must first acquire clearance from the trademark registrar. The majority of trademark requests are authorized; however, the registrar may object in specific situations. This objection, if not addressed effectively, might result in delays or trademark denial. In this article, we'll go through what you should do if you receive a trademark grant objection from the registrar and what is the proper format to file a trademark objection reply.

Trademark Apr 4, 2022 0 Add to Reading List

TRADEMARK

Companies and businesses use logos, graphics, or a specific collection of words to identify their products as their own, distinct from others. These graphics or words make it easy for the consumer(s) to recognize the product's brand, quality, and even origin. As a result, Trademarks are the marks that these firms utilize in the course of their business. In India, trademarks have been recognized as intellectual property and are so protected against infringement under the law (s).

The Trademark Act of 1999 (hereafter referred to as the Act) sets forth the rules for trademark certification, preservation, and retribution. This type of protection is beneficial to both the corporation and the consumer. The trademark registration under the Act is valid for ten years and can be renewed for another ten years if the renewal costs are paid on time.

TRADEMARK REGISTRATION

Section 18 of the Act outlines the procedure for registering a trademark. It might take anywhere from one to two years for a trademark to be registered once you submit an application. After you submit your registration application, you will be issued an allocation number with which you may track the progress of your application.

The procedure is as follows:

The first point will be awarded for Vienna codification.
They will next conduct a formality check to ensure that the application has been submitted with all relevant papers.
It will then be marked in preparation for a test. This implies it will be forwarded to an examiner who will check the mark for any violations of the Act's restrictions.
The exam report will be given if no faults are discovered.
The mark will be published in the official gazette, the Trademark Journal, when the exam report is produced.
Following its publication in the Journal, the public and third parties will have three months to object to the trademark's registration, which can be prolonged for an additional month.
If no objections are raised, the trademark will be registered, and the applicant will be awarded a registration certificate, as well as a ten-year period of protection from the day the application was filed.

TRADEMARK OBJECTION

One of the first steps in the trademark registration procedure is to file a trademark objection. A trademark objection is not the same as a plain denial; rather, the trademark registrar is looking for a good cause or explanation for the mark and registration. The applicant is given the chance to explain how the trademark meets the requirements for legal registration.

A complete reply to a trademark objection must be filed within a month of the date of issuing of the objection. Trademark objections can be based on a variety of factors, including resemblance to an existing trademark, offensive trademarks, lack of novelty, and so on.

Registrars frequently raise objections to a submitted trademark if it breaches trademark registration regulations and laws throughout the registration process.

Trademark registration gives a brand an identity and distinguishes it from competing services or goods on the market. If a company wishes to keep its distinct character, it is critical to protect its trademark. However, there are times when someone will try to prevent you from exercising your right. As a result, we must comprehend the notion of trademark opposition.

OBJECTION

One of the first steps in the registration procedure is to file an objection. It can be submitted by the Examiner/Registrar or by anybody else.

Under Sections 9 (Absolute Grounds of Refusal) and 11 (Relative Grounds of Refusal) of the Act, an Examiner/Registrar may submit an objection on principally two grounds —

If there is incomplete/wrong information in the application.
If there are any existing trademarks that are identical to yours.

The trademark registration may be objected by a third party in capacity of public interest. The third party may get the opportunity of objection to the trademark registration.

When the applicant uses the mark before it is registered, or when the mark is published in the Trademark Journal.
The application's status will be modified to Adv. Before Acceptance in this situation.

The status of the application will change to "Opposed" when you file an objection. When submitting an objection, the individual opposing it must state the grounds for his disagreement to the trademark registration. The examiner will provide the applicant a reasonable chance to defend his application in accordance with the Act's procedures.

FILING OF TRADEMARK OBJECTION

When an objection is filed, the trademark's status in the Indian Trademark Registry is changed to "Objected." The processes to file a response in the case of a trademark objection are as follows:

Step 1: Examining the Trademark Opposition

The first step is to thoroughly analyze and research the objection, since any uncertainty in understanding might result in an improper Trademark Objection Response being filed.

Step 2: Drafting a Response to a Trademark Opposition

The next step is to create a trademark response that includes the following information:

A suitable response to the concern stated, including supporting rule of law, precedents, and judgements. The distinctions between the conflicting mark and the applicant's mark. Other supporting documentation and proof that the response is correct. An affidavit confirming the applicant's use of the trademark on its website and social media channels; media advertisements; publicity materials; availability of trademarked items on e-commerce sites, and so on, accompanied with documentary proof.

The Trademark e-filing facility is then used to file the response draught.

Step 3: Hearing on a Trademark

The application will be processed further for registration and publication in the Trademark Journal if the response is approved. If it is not approved, or if the Trademark Examiner requests more explanations, a trademark hearing will be held, and the public will be notified.

Step 4: Trademark Journal Publication

If the hearing results in a good decision, the mark will be approved and published in the Trademark Journal.

If the outcome is negative, the Refusal Order will be issued, stating the grounds for the refusal. The applicant might still appeal the ruling by filing a review petition within 30 days of the Refusal Order's date, stating the grounds for review.

HOW TO RESPOND TO AN OBJECTION

Following the filing of an objection, the applicant will be notified of the objection as well as the grounds for the objection.

The first step is to respond to the objection with a counter statement.
This must be completed within two months after receiving the notice of objection.
If no objection is filed within two months, the application will be marked as Abandoned.

The Registrar may call for a hearing once the counter is submitted, and if he finds in favor of the applicant, the trademark will be registered. If he determines in the opposing party's favor, the trademark will be withdrawn from the Journal and the registration application will be denied.

The applicant may submit an appeal with the Intellectual Property Appellate Board (IPAB) at this point:

The appeal must be submitted within three months after the date of the Registrar's order.
If an appeal is submitted after the three-month time has expired, the petitioner must describe the cause for the delay in a petition for condonation of delay, which carries a fee of Rs 2,500. If the IPAB accepts the rationale, the appeal will be scheduled for hearing.
Trademarks (Applications, Appeals, and Fees to the Intellectual Property Appellate Board) Rules must be followed while filing a trademark (hereinafter referred to as Trademark rules).
The applicant must verify all of the paperwork.
The Deputy Registrar must then endorse each application on the day it is delivered.
If the Deputy Registrar discovers any flaws in the application, he will notify the applicant.
The applicant must correct the faults and resubmit the application within two months.
If you do not comply, the Deputy Registrar will consider your application abandoned.
The Deputy Registrar will register the case and assign it a serial number if the application is judged to be in order.

The IPAB will hear the matter after it has been registered. According to rule 2, the location of the hearing shall be determined by the jurisdiction in which the matter is filed (m).

The matter will be heard on a specific day. The hearing will proceed in this manner.

The IPAB will make its decision based on the two sides' submissions.
If one of the parties fails to appear on the day of the hearing, the IPAB has the following options:

Make a decision on the case's merits.
Make an ex parte order (in the absence of one party)
The lawsuit should be dismissed.

If the matter is dismissed or decided ex parte, you have 30 days from the date of the judgement to submit a petition to overturn the previous order. The case will be heard, and the IPAB's decision will stand. If the applicant is dissatisfied with the IPAB's decision, he has the option of filing an appeal with a High Court with relevant jurisdiction. Subsequent appeals to the Supreme Court of India are also possible.

CONCLUSION

One should fully comprehend the reasons of the trademark objection, since a misunderstanding of the notion may result in the incorrect filing of a trademark objection reply. As a result, be cautious in your comprehension.

The second stage is to work with the accused party to complete the prepared written reply. Because drafting a trademark response needs specialized knowledge, it should be delegated to experts such as lawyers and attorneys. The whole of the objection should be read carefully in order to respond to it.

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