How to Start a TRADEMARK OBJECTION

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An Overview of Trademark Objection

In India, Trademark Objection is a crucial stage in the trademark registration process. After filing an application, the Trademark authorities carefully examine the application and the mark itself. The application can be rejected on various grounds if the authorities find any issues. During the registration process, the Trademark Registrar may raise objections if the intended trademark violates any regulations or guidelines.

Grounds for Trademark Objection

Here are some common reasons why a Trademark application may face objections:

  1. Incorrect Use of Trademark Form
    An objection can arise if the application is filed using an incorrect or inappropriate form.

  2. Wrong Use of Applicant’s Name
    The applicant's name must accurately reflect the individual, partnership, or company filing for registration. If the name is incorrectly mentioned, the application can be objected to.

  3. Failure to Submit Trademark Form
    If a Trademark agent or attorney is handling the application, it must be filed using form TM-48, along with a letter of authorization. Failure to do so may result in an objection.

  4. False Address on Trademark Application
    The Registrar will object if the application contains an incorrect or false address for the applicant. A valid, accurate address is required.

  5. Inaccurate Specifications of Goods and Services
    If the application lists vague or unclear goods and services, the examiner may raise an objection. To resolve this, the applicant must file form TM-16 and specify the exact goods and services for which the Trademark is being sought.

  6. Trademark Already Registered
    If the applied mark is identical or similar to a previously registered trademark, the application may be objected to under Section 11(1) of the Trademarks Act.

  7. Lack of Distinctive Character
    If the trademark does not distinguish the applicant’s goods or services from others, an objection may be raised. In this case, the applicant must provide proof of distinctiveness to overcome the objection.

  8. Deceptive or Misleading Trademarks
    If the trademark could potentially deceive or mislead the public regarding the nature, quality, or origin of the goods or services, the Registrar may raise an objection. The applicant may request an exemption for specific goods or services by filing form TM-16.

Addressing these objections promptly and accurately is crucial for the successful registration of a Trademark.

 
 
 

Who Can File a Trademark Objection?

As per Section 21 of the Trademarks Act, 1999, "any person" has the right to file an objection to a trademark. This includes individuals, companies, partnership firms, and trusts. If two or more individuals or entities have similar concerns regarding a particular trademark, they can join together as opponents.

The following individuals or entities can file a trademark objection:

  1. The Owner or Author of an Earlier Trademark
    A person who owns a previously filed trademark for similar goods can file an objection.

  2. Prior User
    A person who has been using a similar trademark before the applicant, but has not registered it, may also file an objection.

Time Period for Trademark Objection

A third party can file a trademark objection within three months from the date of publication of the trademark. In some cases, this period may be extended by an additional one month.

Where to File a Trademark Objection Notice?

The notice of objection must be filed at the trademark registry where the trademark application in question was initially filed. For instance, if the application was filed at the Delhi office, the trademark objection proceedings must also be initiated at the Delhi office.

Additionally, it’s helpful to be aware of the common reasons for trademark objections in India.

Procedure for Trademark Objection in India

The process for filing a trademark objection in India involves several steps:

  1. Notice of Trademark Objection
    Any individual or entity can file a notice of objection for a trademark that has been advertised and published in the Trademark Journal. This must be done within four months from the date of publication.

  2. Counter-Statement
    Upon receiving the notice of trademark objection, the applicant has two months to file a counter-statement. If this is not done within the given time, the application may be deemed abandoned.

  3. Evidence in Support of Objection
    The applicant may submit evidence in support of their response to the objection, typically in the form of an affidavit. Alternatively, the applicant may choose to rely on the facts stated in the objection notice without submitting additional evidence.

  4. Evidence Submission by Opponent
    The opposing party is granted one month to file evidence in response to the applicant's evidence. This period may be extended by another month.

  5. Final Hearing
    After reviewing all submitted evidence, the Trademark Registrar will schedule a hearing. Both parties must notify the Registrar of their intention to attend the hearing within 14 days of receiving the notice. The Registrar will then hear the case and make a decision based on the evidence and arguments presented.

  6. Final Decision
    After the hearing, the Registrar will issue a final decision. If the decision favors the applicant, the trademark will proceed to registration under the Trademark Registration Act. If the decision is against the applicant, the trademark will be considered officially objected to.