Trademark Examination Report Section (1) (a) & 11(1) Trade Mark Act 1999

INTRODUCTION

Before Discussing Trademark objections firstly we need to understand what search report is. Search report is prepares by trademark examiners or inspectors. Trademark inspectors analyze an application seeking trademark registration after it is submitted. This should be completed within “six months to one year” of the filing of request or application. Authorities examine any application documents and the mark, as well as conducting their independent thorough research.

Procedure:

The trademark office investigates the Reply to the Examination Report for compliance with procedural criteria. Form, mode, payment of prescribed fees, suitable classification, and so on.  Following this, investigators record their thoughts and analyses on mark extent which is supposed to be register, during which they generally provide grounds why the claimed mark must not be registered under the Trademark Law.

List of Objections, and also the legislative measures, is compiled into a “Trademark Examination Report”. The “trademark examination report”, as well as information on the trademark application, is posted here on trademark office's website.

Every Applicant must respond “within thirty days from the date of receipt of the examination report’. Trademark Examination Reply is the name of this document.

The trademark applicant seems to have the choice of responding to demurral in a trademark examination report. An agency designated as per the one who is filing trademark application,  can provide a statement. This authorisation is given through a Power of Attorney under the Trade Marks Act of 1999, Form TM48. "Reply to Examination Report" is the title of this response.

This response can be emailed to.tmr@nic.in with a photocopy in colour pdf format attached, or it could be posted on the trademark office's website. It could even be delivered to the relevant trademark office in person or electronically. Attaching with the replies to the examination report, affidavits and documents (where required) should be submitted.

OBJECTIONS

• Objections Raised During Examination: For such circumstances, the Applicant is required to comply because the requirements are spelled out as per the provisions and mandated abided in the office. As illustration, if the trademark office has requested Form TM48 as an attachment, the Trademark Applicant may provide it along with supporting documentation. Whenever a representative is filing for a trademark throughout place of the Applicant in person, or when the Applicant in person is presenting the application. If the commodities indicated in the application and the trademark class specified in the application are not even in harmony, the Trademark Office will oppose. It's critical to underline that seeking competent legal guidance on the right categorization of commodities is recommended before filing a Response to Examination Report for a trademark class classification objection.

• OBJECTIONS UNDER SECTION 2(A) - OBJECTION CONCERNING THE FACT “THAT NONE OF THE GOODS OR SERVICES MENTIONED IN THE APPLICATION FALL INTO THE CORRECT TRADEMARK CLASS”. 

The trademark applicant may submit a request to correct the class of products or assert in the form of a declaration that the goods or services have been correctly classified according the Registrar's classifications of goods and services.

• 2B OBJECTION- “OBJECTION TO THE EFFECT THAT SOME OF THE COMMODITIES REFERRED TO IN THE APPLICATION DO NOT FALL INTO THE CLASS”.

The person filling application might recommend that the application be amended by removing elements which does not belong to the category mentioned. Then submit separate applications for those goods/services under the relevant class (es) also applicant may assert that all products fall into the class specified in the form, according to the Registrar's classification of goods and services.

• OBJECTIONS UNDER SECTION 11-There could be an objection based on Section 11 of the Trade Marks Act 1999's respective ground of refusal. This argument arises during trademark registration because a similar or identical trademark has previously been registered or applied for with the Trade Marks Registry by a third party. The goal of this ground of refusal is to defend the rights of the party that owns a similar or identical trademark, as well as to protect the general public from being misled or deceived about the origin of the goods or services. If the trademark's respective grounds are challenged, the applicant must closely review if they wish to argue that his mark is distinctive and hence must be recognized.

• OBJECTION WITH REGARD TO ABSOLUTE GROUNDS

ABSOLUTE GROUNDS are addressed in Section 9 of the “Trade Marks Act of 1999”. Such complaints are about the mark itself, which is not properly registered owing to the unique flaws. This basis of rejection is largely intended to defend the broad public's interests rather than the interests of any single third party. A trademark must be distinctive as well as non-descriptive, according to Section 9(1) of the Trade Marks Act of 1999. This would be to say, it should be different in and of itself, without indicating the commodities it represents or even being common to the trade wherein the Trademark would conduct business.

As illustration, if a firm selling Apples chooses the alternative designs "Apple," it is a descriptive trademark; nevertheless, if a company selling computers chooses the word mark "Apple," it is a non descriptive trademark. Similarly, if Salon service registers the term "Salon," no other Salon can use it. If the trademark is deemed non-distinctive, the applicant can respond to the ER by arguing that the Applicant's mark could be differentiated from the products and services it represents.

Conclusion: -

Only single-page blanket denials should be included in answer. Almost all of the complaints cannot be based on the terms "systemically, phonetically, and aesthetically distinct from the cited marks." Each complaint should really be treated independently.

References:

• https://blog.ipleaders.in/replying-trademark-examination-report/

• https://ipindiaonline.gov.in/eregister/examreportnew.aspx?APPLICATION_NUMBER=WFlaW1xdKi4sMCcwLVhZWltcXQ==

• https://taxguru.in/corporate-law/objection-trademark-application.html

Written by:

Kaushiki Keshari