Trademark Objection

Trademark Objection is an official letter issued by the Registrar. (TM) Objection is the first step of Trademark Registration. This process may take place if the examiner has a problem with an existing registered trademark that is similar to the new one.

Trademark Objection conserve the only rights of this existing mark. It also reduces confusion arising out of similarity which can damage the potential reputation of any brand in the future. So the examiner issues the trademark objection in the very beginning that is also helpful to minimize the possibility of opposition. In this article, we clarify all the things about the trademark objection process, Why it is necessary and on what ground a TM objected such that you could get your TM registration soon.

What is Trademark Objection?

Objections can be raised by the registrar under Section 9(1)(B) of the Trademark Act,1999. According to this section if the applicant applied the mark which indicates the kind, quality, quantity, value, geographic origin or time of production of the goods or service may raise an objection.

Once you file for the trademark application, it is then examined by the Controller General of Patent, Design and Trademark (CGPDTM). In the latter case Examiner was not able to find any confusion issue in the trademark and then he can mark as object filed. An objection does not take rejection into account. The purpose of the Trademark Objection is to do fair business in the market and to avoid confusion.

How to Respond to a Trademark Objection?

If the protection of your trademark is being contested, early and efficient action is essential. Here’s how to proceed:

1. Review the Objection Notice Carefully

Be totally clear on the reasons specified in the Trademark Office’s objection notice. Waivers can run from the similarity to other trademarks, to the feature of distinction or that it will deceive consumers.

2. Prepare a Response

Write a more thorough response that acknowledges the objection. Such reply should contain arguments and proof substantiating your claim, including but not limited to evidence of the distinctiveness of your mark, evidence of prior use, consumer testimony with respect to your product, etc.

3. Consult with a Trademark Attorney

With the complexity of the trademark objection reply, professional legal advice is strongly recommended. A trademark lawyer can help you understand the nuances of the objection, draft a powerful response and navigate what happens next.

4. File DC Response on Time

Make sure they file your reply with the Trademark Office in the appropriate period of time, usually 1 month from receiving the notice of opposition in many countries. It is important not to miss this deadline as doing so can cause your trademark application to be abandoned.

5. Monitor the Application Status

Once you have filed your response, do not forget to check for the status of your application on the Trademark Office’s website or with your attorney. The procedure could include further exchange or the request for another action by the Trademark Office.

6. Be Prepared for a Hearing

In some cases, the Trademark Office will even set a hearing to formally address the objections and your response. Be prepared to argue, possibly through your trademark attorney, why you should be allowed to register the mark even given the objections. Documents for Filing Reply to Trademark Objection

Documents Required for Filing Trademark Objection Reply

Following documents required  while responding to a trademark objection:

1. Authorization Form TM-48.
2. Some marks address an office correspondence or registration number.
3. Proof of identity: such as an Aadhaar card or a passport.
4. Proof of address, for example a utility bill or bank statement.
5. Invoicing and purchase orders connected to the trademark.
6. An affidavit of use in commerce or excusable non-usage.
7. Newspaper, magazine, or online advertisements.
8. Evidence the mark is in use online, including website links or promotions.
9. Proof that the trademark is being used for commerce, such as a product package or label.
10. “Firms will be able to print business cards and letterheads with the trademark.”
11. Certificates of the government such as MSME registration or FSSAI.
12. Screenshots of social media pages or printed copies of ads.
13. Written response to the examination report.

How to Avoid Trademark Objection

The applicant can bypass the process of trademark objection by adhering to the following:

1. Performing the Full TM Search: A full TM search is an extensive research, that helps to determine if a trademark exists or not. Hence, the applicant needs to perform a TM Search for his product/ brand and try to minimize chance of TM Objection.
2. Select Different Mark: The applicant needs to select such mark, which can be a source of origin of one’s trade. It also helps to prevent the TM Objection procedure.
3. Hire TM lawyer: Then, the registration of TM you were in touch with TM attorney can be more complex. They have many years for experience that can lower the risk of being opposed. “Litem Legalis” might be the best forum.
4. Keep the accurate information: The applicant must have to gather the whole accurate details like use date of a mark as well as bills, few respective authorities online and all that. And at the registration they need to provide all such documents or details that can diminish the possibilities of TM Objecting.

How To Know The Status Of Trademark Application?

Here are the steps to check the status of a trademark in India-

Step 1: Visit IP India website: Visit ipindia.gov.in/

Step 2: In the next, choose ‘National/IRDI number’ option. The next page will ask you for the trade mark application number and captcha.

Step 3: Insert your trademark application number, fill the captcha and press ‘View’.

Step 4: This is where you can find the specifics about your application and what stage it’s currently in. Submission applicant information, including: – application number – class – date of mark – location of mark – name of mark/trademark name – description of company or commercial establishment seeking registration and type; and product or brand description etc.