Legal Remedies Available against Objection Raised under Section 9 of the Trademark Act of 1999 | Lawyers Advice in Delhi NCR | IP Attorney in Delhi NCR | IP Lawyer in Delhi NCR |

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Trademarks are unique names, symbols, phrases or graphic designs that differentiates the business, product or service, of one company or person from that of others. It represents the identity of the company, and for the same reason, are registered under an application made under Section 18 of the Trademarks Act, 1999. However, when the subsequent status of the trademark registration application is shown as “objected” in an examination report, it refers to the fact that the examiner of trademarks has raised an objection against the application.

One of the objections raised against a trademark application could be under Section 9 of the Trademarks Act, 1999, which provides for the absolute grounds for refusal. A trademark objection under Section 9 means that the examiner deems the mark to be either:
i) Lacking a distinctive character which differentiates the product of one person from another; or
ii) Is exclusively composed of marks which describe the kind, quantity, quality, purpose of the product, geographical origin of the product or the time at which the particular good is produced or service is rendered; or
iii) Is exclusively composed of customary marks that indicates practices of trade; or
iv) Is one that may cause confusion or deceive the public; or
v) Consists of matter that is either scandalous, obscene or has matter which may hurt religious sentiments; or
vi) Is exclusively composed of natural shape of goods or any other shape which has significant relation or value attached to the goods; or
vii) Is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

Thus, it is best to exclude marks or indications that form part of any of the above while designing a trademark. Nevertheless, when a trademark application is objected on any of the above grounds, it is essential to file a reply to the said objection made by the examiner, and this shall be efficiently done by a lawyer, with the support of previous judgements in similar cases. The Trademark Rules 2017 states that an Applicant can file a reply within 30 days upon receipt of the application of rejection from the department, to the trademark office or can request a hearing.

The reply to the examination report must be filed within 30 days along with supporting documents to justify the claims made in the reply. In case the Applicant fails to file the reply within the said period of time, then the application is considered to be abandoned, and then the Applicant will have to file a fresh application if he wants to register the Trademark. Thus, the reply filing is an important step in a trademark application. However, the Applicant may request for an extension by way of filing a TM-M application along with the requisite fee with the assistance of the Applicant’s Trademark attorney. The Applicant while requesting for such extension shall also inform valid reasons for requesting the same.

The objection raised in the trademark examination report needs to replied in an efficient manner by a trademark attorney. The process of objection and filing of reply to the said objection can be discussed as follows:
i) When the trademark examiner objects a trademark application, the same shall be communicated to the trademark agent or attorney. The report shall include the reasons on the grounds of which the application was objected. The Applicant has to file a reply to this report within thirty days.
ii) The first job of the attorney is to analyse the examination report. This shall help him in determining the reasons for objection.
iii) The Applicant through his attorney shall draft the reply on how the mark is distinctive in nature, has no meaning or connection to the characteristics of the product/service and when applicable, shall also prove the prior use of the mark before the application for registration.
iv) In addition to the above-mentioned claims, the attorney shall provide supporting laws and judgements on similar matter in the reply. The supporting documents like power of attorney need to be submitted, along with other supporting evidence like financial statements, visiting cards, letter heads, etc. which shows the usage of the trademark, thereby validating the claims in the reply. These supporting evidences are of significant importance to prove the inherent or acquired distinctiveness.
v) If the reply is accepted, the application will then move towards registration and advertisement of the same in the Trademark journal. On the hand, if the reply is not accepted, then the Trademark registry will keep the matter for hearing on a particular date, the details of which will be communicated to the Trademark Agent or attorney.

The reply filed to an objection raised under an examination report is a major opportunity to clear any uncertainties regarding the trademark.
A landmark decision on this matter is the 2014 case of Pidilite Industries Ltd. V Jubilant Agri & Consumer Products Limited (2014 (57) PTC 617 (Bom): 2014 (2) ABR 142), whereby the Court held that the word “marine” used in the trademark of an adhesive had acquired distinctiveness after being used in the market for over 9 years. The parameters of determining distinctiveness are extent and period of use, goodwill, association the mark has on a consumer’s mind, advertisements and investments made on them, identification of trade circles and distribution channels, as well as the customers involved. Therefore, if the supporting documents in a reply filed against an objection has proof as to the prolonged use leading to the popularity and distinctiveness of a trademark, the trademark can be registered without any issues.

However, it is not mandatory that the trademark was used for a very long period of time, for it to acquire distinctiveness. Even if a new idea appeared fascinating in eyes of the consumer and it became well-known overnight, it acquires distinctiveness. This observation was made in the case of ITC Ltd. v. Britannia Industries (CS (COMM) 1128/2016). Massive sale figures can also be a criterion for assessing the distinctiveness of a trademark, as explained in the case of M/S P.K. Overseas Pvt. Ltd. v. M/S KRBL Ltd. (ORA/161/2011/TM/Del and M.P. No. 179/2011 in ORA/161/2011/TM/Del). Therefore, even if the mark was in use for a short period of time, like for 3 months, the trademark can be registered for its distinctiveness if the Court is satisfied that the mark is well-known and has acquired distinctiveness.

The trademark law specifies that a trademark which has obtained a secondary meaning or secondary significance shall not be refused registration even if it falls under the grounds of refusal mentioned under Section 9. For instance, in the case of Living Media India Limited v. Jitender V. Jain and Anr. (2002 VAD Delhi 161, 98 (2002) DLT 430), the court had to address the issue as to whether the name and style of “AAJ TAK” and the logo is a generic term and is not the monopoly of any particular individual. The court noted that even though the words “AAJ TAK” are descriptive in nature and have a dictionary meaning, the words used together is still a coined word of the plaintiff and has therefore acquired a secondary meaning by virtue of prior, continuous and extensive use. Hence, even if the mark of the Applicant is of generic nature, the same shall be capable of being registered if the words used is able to create a clear, distinct image on the consumer concerning the product/service endorsed by it.

Furthermore, as per Rule 33 of the 2017 Trademark Rules, if the response to the examination report is not satisfactory or where the Applicant has requested for a hearing, the registrar shall provide an opportunity for the same, and it shall be conducted according to Rule 115. It is also important for the applicant to appear on the date of hearing, failing which, the application shall be considered as abandoned.

The application and the subsequent registration of trademarks is a crucial step in the furtherance of a business, and for the same reason, it is important to register the trademark in order to avoid future infringements of the same. An objection in the application for registration of a trademark can create a hinderance in obtaining the trademark. Therefore, it is important to avoid objections over the trademark, the registration of which has been applied for.
Authored By: Adv. Anant Sharma & Anjana Gopinath