In this blog, we have explained the importance of the Trademark Examination Report in the Trademark Registration process and discussed how to file appropriate replies if objections have been raised in the Report against your application.
Trademark Examination Report & Objection - Overview
What is a Trademark Objection Reply?
Valid Grounds for Trademark Objection:
- Section 9 of the Trademark Act: Section 9 presents the Absolute Grounds for objecting the Trademark, and deals with reasons related to the inherent flaws in the mark itself instead of external factors related to its surrounding circumstances. These grounds of objection are primarily aimed at protecting the interests of the general public instead of any specific aggrieved third party.
- Section 11 of the Trademark Act: Unlike Section 9, Section 11 presents the Relative Grounds of objecting a Trademark. These are grounds which do not arise due to the inherent flaws in the proposed mark, but due to some external factor; for instance, the presence of a similar existing trademark, the proposed mark already classified as a well-known mark and so on. The purpose of this objection is to protect the interests of specific third parties which would face the consequences if the proposed mark gets registered.
- Non-Compliance with Procedural Formalities: Objection may arise if the trademark application fails to meet certain formalities or procedural requirements specified by the trademark office. This could include issues like improper classification of goods or services, failure to submit the necessary documents or fees, or not adhering to the prescribed format for the application.
- Objection u/s 9 of the Trademark Act: Objections may be raised if the proposed mark fulfils any or all of the conditions mentioned in Section 9 of the Trademark Act. These include lack of distinctiveness, generic use, misleading to the public, established in common trade practices, prohibited under a law, containing obscene matter, or resulting from the obvious shape of goods.
- Objection u/s 11 of the Trademark Act: Objections may be raised on the ground mentioned in Section 11 of the Trademark Act which includes similarity with an existing trademark, reservation as a well-known mark, or prohibition against using the proposed mark under any existing Indian Law.
- Applicant is Not the Rightful Owner: The applicant is not entitled to claim proprietorship to the trademark as he is either not the first user of the mark or has never used and has no Bonafide intention to do so in respect of the goods/ services mentioned in the Trademark Application.
- Prior Existing Rights of a Third Party: Objection may arise if there are existing trademark rights held by a third party that are similar to the proposed mark. If the trademark office finds that the application infringes upon the pre-existing rights of another business or individual, they may raise an objection to protect the interests of the existing rights holder.
- The application has been accepted in error, or
- The conditions on which the trademark has been accepted have not been followed during the registration process.
- The application has been successfully opposed by a third party during the public inspection stage after publication of the mark in the Trademark Journal
- The Central Government has exclusively directed the withdrawal of acceptance granted to the mark [Section 23(1) of the Trademark Act].
When Should You File Trademark Objection Reply?
Can the Timeline for Filing Trademark Objection Reply be Extended?
How to File Trademark Objection Reply?
1. Reply to “Objection to Acceptance”
2. Reply to “Conditional Acceptance”
What is the Cost of Filing Trademark Objection Reply?
- Trademark Attorney/Agent Fees: If you decide to hire a trademark attorney or agent to prepare and file the objection reply on your behalf, their professional fees will add to the overall cost. The fees charged by attorneys can vary depending on their experience, reputation, and the complexity of the case.
- Number of Classes: Trademark applications often cover specific classes of goods and services. If the objection pertains to multiple classes, there may be additional fees for each class.
- Communication and Correspondence Costs: If there is any back-and-forth communication with the trademark office during the objection reply process, additional costs may arise.
- Additional Services: In some cases, you might need to conduct further research or submit additional evidence to support your objection reply, which could incur additional costs.
What are the Consequences of Not Filing Trademark Objection Reply?
- Abandonment of the Trademark Application: The most immediate consequence of not filing a Trademark Objection Reply is that the application will be declared abandoned by the Trademark Registry Office. This means that the application will no longer be considered active, and the applicant will lose the opportunity to pursue registration for the proposed trademark.
- Loss of Filing Fees and Time Invested: All the fees paid for filing the trademark application will go to waste if the application is abandoned due to the absence of a proper reply. Additionally, the time and effort invested in the application process will also be ruined.
- Need to Start the Process Anew: If the application is abandoned, the applicant will need to start the entire trademark registration process from scratch. This means filing a new application, paying the trademark fees again, and going through the entire examination process once more.
- Potential Trademark Infringement: If the applicant continues to use the proposed trademark without securing registration, they may unknowingly infringe on the rights of other registered trademarks. This could lead to legal disputes and possible financial liabilities.
- Loss of Brand Protection: Without a registered trademark, the applicant will miss out on the legal benefits and protection that come with trademark registration. This includes exclusive rights to use the mark in connection with the specified goods or services, as well as the ability to enforce those rights against infringing parties.
- Competitors May Register a Similar Mark: If the proposed trademark is abandoned due to the lack of a reply, it opens the door for competitors to potentially register a similar mark, causing confusion in the market and diluting the uniqueness of the brand.
Q1: What is a Trademark Examination Report?
A Trademark Examination Report is a document prepared and issued by the trademark examiner that outlines the objections or issues with a trademark application. It highlights any conflicts, lack of distinctiveness, or non-compliance with trademark laws.
Q2: What are the reasons for receiving objections in a Trademark Examination Report?
The reasons for receiving objections in a Trademark Examination Report can vary but commonly include conflicts with existing trademarks, lack of distinctiveness, descriptive or generic nature of the mark, or non-compliance with formalities and documentation requirements.
Q3: How long does it take to receive a Trademark Examination Report?
The time to receive a Trademark Examination Report can vary depending on the jurisdiction and workload of the trademark office. Generally, it takes several months to a year or more to receive the report after filing the trademark application.
Q4: Can I respond to the objections raised in a Trademark Examination Report?
Yes, you can respond to the objections raised in a Trademark Examination Report. You have an opportunity to provide arguments, evidence, or amendments to address the objections and try to overcome them. It is crucial to consult a trademark attorney to prepare a strong response.
Q5: What happens if my trademark application is rejected in the Trademark Examination Report?
If your trademark application is rejected in the Trademark Examination Report, you have options for further action. You can file a response challenging the objections, provide additional evidence or arguments to support your case, or amend the application to address the concerns raised. Consulting a trademark attorney is advisable to explore the best course of action based on your specific situation and the grounds of rejection.