Top Tips for Solving the Problem of Objection to a Trademark: Lawyers Advice on IP Laws of India | IP Law Firm in Delhi NCR | IP Law Firm in India | IP Attorney in India | IP Attorney in Delhi NCR | IP Lawyer in Delhi NCR

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The purpose of a trademark is to create a distinctiveness for a brand and separate it from other brands and products in the market. Hence defending it is imperative, if one wants to sustain its unique image. However, there are various grounds on which one can be stopped from doing the same.

Definition of Objection under Trademark
Trademark Objection is an example where the Trademark Examiner raises questions and puts forth objections so that proper registration of a trademark can be ensured. Hence, since it comes from the Examiner, it is a governmental objection and because it seeks to make applicants certify the distinctiveness of their trademark, it becomes one of the most important steps in the whole process of registration.

Circumstances for Trademark Objection: –
• Contains wrong or incomplete information
• Existence of other similar trademarks
It is important to note that an application for trademark needs to be faultless and should have no errors or misleading information. If any such information is found, such as, incorrect applicant name, primary place of business, etc. the chances of an objection being raised become higher.

Contains wrong or incomplete information: If information about the applicant name, place of business or any such information in the trademark application is found to be false or misleading, then it is likely to attract a trademark objection.

Wrong form filled for filing: An objection can be raised by the examiner if the trademark application is filed using the wrong form. It has to be ensured that form TM-48 must be filled and attached with trademark application.

The grounds of refusal of leading to trademark objection are: –
Absolute Grounds of Refusal (Section 9) –
Such grounds of refusal attract an objection so as to prevent any possible monopoly: –
• Where a mark is unable to differentiate the goods or services of one person from those of another person or can deceive the public or cause confusion, as held in the Supreme Court judgement in case of Heinz Italia v. Dabur India 2007 (35) PTC 1 (SC), merely changing the packaging every few years doesn’t validate protection of trademark;
• Where a mark is indicative of the quality or quantity or an intended purpose or values or geographical location;
• Where a mark has indications that have become a custom in the existing language or in the conventional practice of trade;
• Where a mark has content likely to hurt religious sentiments or it has scandalous or obscene content;
• Where the mark itself is banned under the Emblems and Names (Prevention of Improper Use) Act, 1950

Relative Grounds of Refusal (Section 11) –
This section attempts to restrict the registration of a Trademark, where due to its shared or similar identity with an earlier trade mark could lead to confusion in the minds of the public. As held in the Madras High Court judgement in case of Wipro Enterprises Ltd. v. Heinz India Private Ltd. (C.S.No.23 of 2015), similar identity doesn’t amount to mere phonetically similar sounding trademarks, rather, the taglines attached with the trademark as well, and how long the taglines have been in use.

What happens after filing an application?
The application is reviewed by the Examiner as the competent governmental authority and remarks and discoveries by the Examiner are noted in a report called the ‘Examination Report’, which is subsequently issued to the applicant demanding explanation, clarifications through writing or hearing.

How to tackle the Examination Report?
The most important thing to remember for a reply to the examination report is that it has to done within 30 days of it being received, failure to do so can result in the Registry abandoning the application made meaning, the applicant would have to abandon their claim over the trademark.

Important points to consider for a reply to an Objection: –
• The applicant or their lawyer has to file a reply to any objections put forth in the examination report within the stipulated time after carefully understanding the grounds of objection highlighted by the Examiner.
• The manner in which the reply should be made should ensure that it can both support and give proper reasoning for the distinctiveness of the mark and complies with relevant provisions of law.
• In the case where no format is provided for the reply, the applicant can enjoy all rights so as to give proper reasoning and clarification.
• Nevertheless, regardless of the freedom promised above, the applicant shall not attempt to forget factors that have become a norm in the practice.
• Additionally, it is recommended that legal consultation should be taken for drafting and filing the reply as so as to ensure proper consideration of recent case laws and trademark provisions is done to satisfy the questions raised by the Examiner in a professional manner.

In conclusion, the Examiner has a crucial role to play in the registering of a trademark and has the rightful capacity to be objecting against a trademark. It must be understood that creating and building a unique brand name and brand value requires skill and innovation and therefore, the application for a trademark has to satisfy all requirements before it can be published in the Trademark Journal.
Additional Links –
https://www.ipindia.gov.in/TM-Rules-2017.htm

Authored By: Adv. Anant Sharma & Parinay Gupta