What is a Trademark Objection?
A Trademark Objection is raised by an examination officers responsible for scrutinizing the trademark application in case the application does not meet the criteria for grant of trademark in his / her view.
Applications for registration of trademarks are normally objected for registration on following main provisions of the Trademarks Act
- Section 9- which describes “absolute grounds for refusal of trademarks” which are not prima facie “capable of distinguishing” the goods/services of one person from those of another person are devoid of distinctive character.
- Section 11, which sets out “relative grounds for refusal”’ by reason of conflict with prior trademarks and well-known marks, however under Section 12 a mark could be registered on the basis of “honest concurrent use” when supported by evidence to that effect
- Section 13 under which a mark is prohibited for registration in respect of chemical products on the ground that it consists of name of a chemical element or an international nonproprietary name
- Section 14 under which a necessary consent of a person, whose portrait appears on the trademark, is required
- Section 15, which governs provisions relating to registration of a trademark as “a series”
- Section 16, which govern provisions relating to association of trademarks.
Possible outcomes of a scrutiny by an Examination officer
In case the examination officer is satisfied that the application meets all requirements as per law, the application is passed to get published in the Trademark Journal.
Howbeit, in case of a negative view, they will send you a report, stating what went wrong with your application for your reference. This scrutiny of the examiner gets recorded in a certain report, otherwise known as the “Examination Report”. Once one gets this examination report, they must file up their response to the objection within 30 days from the publishing of the report; if in any circumstances this response doesn’t get sent to the concerned examiner/officer, they will make their application fall of the grid.
Types of Trademark objections:
There are predominantly classified into two categories:
#1. Formality Objections
Objections falling in this lot are usually on the technical side of the spectrum, these are raised when there is an error(s) in one’s trademark application form, those may be: filling up names, addresses, and one’s country in an erroneous manner.
#2. Substantive Objections
These objections are fairly common ones as they are raised when one’s trademark is similar to any of the existing trademarks on record. Responding to an Examination Report / Objection
Having thoroughly gone through the grounds of objection raised by the examiner, the applicant or their consultant is required to file a response to the examination report within a given period of time.
The Proper Reply
The reply ought to be formal, polite and in a way, which can present a constructive case and deliver a cogitative reasoning that could aid their cause. Bear in mind, it is extremely crucial for the response to convey and make the examiner see that the trademark they are going for is well within the laws. Note: Drafting a response to an examination report is not as cinch as it sounds. It is highly urged to our reader to seek professional help to get it done, as professionals are quite familiar and experience with: all recent case-laws, trademark provisions and technical jargons that must be taken into consideration whilst filing up the response in the best way possible.
Post-Filing the Reply
As soon as the portal receives a response to the examination report, the status, which was then “Awaiting to Reply” is turned to “Objected”. Now, it’s time for the waiting-game. The applicant has to be on the lookout for any responses from the registry.
Thereafter one of the two things will take place:
Scenario 1:
The examiner is satisfied with the reply and finds everything to their liking; in such a case, they order for the trademark to be published in the Trademark Journal.
Scenario 2:
The examiner is dissatisfied with the reply and doesn’t find it to their liking, applicants are the left with an option in the form of “Trademark Hearing”
Our readers can read about “Trademark Hearing” on this post.
If you want to know more / consult with us in regards to Trademark objection or how to file up a reply, drop in a comment or send us an email, our team of experts will be more than to help you out. Cheers!