The World Intellectual Property Organization (WIPO) defines a trademark as a sign that can set one company’s products or services apart from those of competitors. Some of the well-known trademarks that have their own identities and have reserved a special spot in their respected markets include Apple, Windows, Jio, Zara, Dell, and UrbanClap. The only goal of a trademark is to guarantee that consumers can recognize products and services simply by glancing at the company name or emblem. Learn more about trademark objection process.
Who may apply for trademarks?
To give their company a unique identity, any individual, collection of individuals, or legal body like a company or LLP may register for a trademark. When a product or service has a registered trademark, it distinguishes it from competing possibilities on the market by having that specific attribute. Any individual who meets the requirements of Section 18(1) of the Trademark Act of 1999 may submit an application for a trademark at the Trade Marks Registry with the aid of a trademark agent or attorney.
The first challenge a lawyer or trademark agent encounters when submitting an application for registration is a trademark objection. A trademark objection is an argument made to the applicant by the examiner of the trademark registry office that the proposed trademark has legal obstacles and cannot be registered as a trademark. When they discover a trademark to be misleading, similar, or descriptive in nature to that of an already existing trademark, several countries will often follow this method.
Constituents of trademark objection
Every trademark objection consists of a report-style document outlining the specific legal issues with the application. To make sure that the proposed trademark, if allowed, wouldn’t infringe on any previously registered trademarks in the nation, the examiner runs a trademark search to find any competing marks.
The examiner additionally confirms that the application was submitted in accordance with legal requirements. For instance, the applicant must supply the requested document if the trademark office has requested its attachment. The examiner would object if this were not done.
Responding to Section 9 objection
When the examiner believes the trademark to be descriptive of goods or services, identifying the nature, quality, or origin of the same, this is the main justification for filing a trademark objection under Section 9. Use of the term “Best Computers” for a computer store, for instance, is deemed to be descriptive of the goods and hence would be subject to criticism under this clause.
The following can be included by the applicant in his response to the examination report to address this objection:
Distinctiveness of the mark: The applicant can justify why his mark does not accurately describe the products or services for which he had submitted an application for registration. The applicant must provide supporting evidence to demonstrate why his mark is distinctive and hence eligible for registration.
Arbitrary mark: The applicant must demonstrate that the mark is meaningless, arbitrary, and unrelated to the nature or character of the goods or services.
Prior use: If appropriate, the applicant may further mention that his mark has become recognizable as a result of his use of it prior to submitting an application for registration. The applicant must provide an affidavit with all supporting documentation showing the extensive usage of his mark in support of this claim.
Responding to Section 11 objection
When the examiner believes that a similar or identical brand has already been registered or applied for before the registration of Trade Marks by a third party, it is the most common grounds for raising a trademark objection under Section 11. For instance, using the name “FOOGLE” for a search engine on the internet or for any other reason would be prohibited by this provision.
Each of the listed marks must be addressed separately in the response to the section 11 objection. If the applicant can prove the following, the section 11 objection may be lifted:
Degree of similarity: One must always compare the stated mark(s) and provide justifications for why they are not comparable to his mark.
Differences between the goods/services: To see the goods and services supplied under the stated mark(s), one needs conduct basic research on the cited mark(s). It is possible that the registry will object to the registration of a mark by mentioning another mark that offers an entirely different range of products and services than the applicant.
Status of the Cited Marks: The status of the Cited Marks must be checked. The register could object to the registration of a mark by bringing up an abandoned, rejected, or cancelled mark.
Prior use: If the applicant used the mark before the specified mark(s) were registered, he may assert prior usership.
Responding to objections pertaining to a formal requirement/s
The applicant must compulsorily comply with the requirements as these requirements are outlined in the statute and are required by the office in the event of a clerical error where the applicant forgets to attach any pertinent document along with the registration application.
For instance, if the trade mark office requested that Form TM-48 be attached, the applicant must include it with the necessary supporting documentation.
Responding to objections pertaining to incorrect classification
If the type of goods and services listed in the application is erroneous, the registrar may object to the mark. The applicant must submit a request to change the class of goods and services in response to the objection that claims none of the goods or services mentioned in the application belong in the appropriate trademark class. This request must be made in accordance with the Registrar’s published classification of goods and services.
The applicant may file a request for revision of the application by eliminating items that do not fall within the pertinent class if the objection claims that some goods and/or services specified in the application do not fall within the class.