Trademark Objection – An Overview

A formal notification of opposition to the registration of a trademark is called a trademark objection. This is a legal process where a third party contests the registration of a trademark because it conflicts with their existing trademark rights. Anyone who believes that the proposed trademark registration would infringe on their trademark rights or cause confusion with their existing trademarks can raise a trademark objection. The objection can be based on various grounds, such as confusing similarity, descriptiveness, deceptiveness, genericness, and prohibited marks.

Trademark objection can trigger a legal dispute between the involved parties. The trademark owner may need to respond to the objection by presenting evidence of the distinctiveness and validity of their trademark or by modifying the proposed trademark registration. To prevent trademark objection, it is crucial to conduct a thorough trademark search before applying for trademark registration. This can assist in identifying any potential conflicts with existing trademarks and making necessary adjustments to the proposed trademark registration.

Trademark objection plays a vital role in trademark law as it safeguards the rights of trademark owners and prevents confusion among consumers.

In India, trademark objections can arise due to various reasons, such as:

In India, trademark objections can arise due to various reasons, such as:

Incorrect trademark form usage: If the trademark application is not in the appropriate format, the registrar may initiate the trademark objection process. The applicant can rectify this objection by submitting a trademark alteration request on Form TM-16.
Incorrect applicant name on the trademark application: If the applicant’s name is incorrect on the trademark application, the corresponding authorities may initiate the trademark objection process. The applicant can correct this mistake by submitting a request for alteration on Form TM-16.

Non-submission of Form TM-48: If Form TM-48 is missing an attachment or is filled out incorrectly, a trademark examiner may initiate the trademark objection process. If someone other than the applicant has submitted the application, a properly stamped power of attorney in their favor must be filed. The applicant can overcome this objection by requesting the reasons and submitting a rectification request on Form TM-16.

Incorrect address on the trademark application: If the business address provided on Form TM-16 is incorrect, the corresponding authorities may initiate the trademark objection process. The applicant must record their Indian address on Form TM-16 if they do not have a substantial place of business in India. The applicant can overcome this objection by submitting a trademark application rectification request using Form TM-16.
Unclear specification of goods or services: If the description of goods and services for Trademark Class XX is broad and vague, the trademark objection process may be initiated. The applicant should list the precise goods for which the trademark registration in India is requested on Form TM-16. If a concern is raised regarding the description of goods or services, the applicant can propose a correction to the trademark application using Form TM-16.

Similar trademark exists: If already registered trademarks are identical to the applied trademark, the current trademark owner may face objections. The trademark application cannot be registered if there are already registered trademarks for comparable or identical goods or services, according to the Trade Marks Act of 1999. The applicant can take corrective action by claiming that the trademarks listed as competing marks are different from their own.

Steps to File a Trademark Objection Reply

If you receive a trademark objection notice, it is important to file a timely and effective response to defend your application. Here are the steps to file a trademark objection reply:

1. Review the Objection Notice: Thoroughly review the objection notice to understand the grounds of objection.
2. File a Counter-Statement: File a counter-statement to the trademark objection within two months of receiving the notice.
3. Attend a Hearing: After receiving your reply, the registrar will schedule a hearing where you can present your evidence and documents to support your trademark application.
4. Appeal to the IPAB: If the registrar rules in favor of the opposing party despite your evidence and documents, you can appeal to the Intellectual Property Appellate Board (IPAB) within three months of the order date.
5. Fix a Hearing Date: If the IPAB accepts your appeal, they will fix a hearing date after verifying your application and documents.
6. Complete Required Changes: If the deputy registrar identifies any defects in your application, they will provide notice and you must complete and submit the required changes within two months.
7. Avoid Delays: Any delay in responding to the objections or completing the required changes may lead to the application being abandoned.
8. IPAB Decision: Based on the documentation provided, the IPAB will decide the case in favor of either party.

It is essential to follow the rules and regulations of the IPAB throughout the filing process to ensure the best outcome for your trademark application.