Ex-Legal Solutions

Trademark Objection - Submitting Reply

Trademark registration is a type of intellectual property protection, under which a word or visual symbol used by a business to distinguish it goods or services from other similar goods or services originating from a different business can be protected. To register a trademark, a trademark application must be filed by the applicant with the relevant Trade Mark Registrar in the prescribed format. Once a trademark application is filed, the Trade Marks Registrar would process the application and issue an Examination Report. Among the outcomes, the Trademark Examination Report could allow for the trademark application to be advertised before registration or the Trademark Examiner could raise an objection for registration of the mark.

In cases wherein the Trade Mark Registrar raises an objection for registration of a trademark, the applicant has an opportunity to submit a written reply for the objection raised within 30 days. The reply to the Trademark Examination Report should contain reasons, facts and evidence as to why the mark should be registered in favour of the applicant along with supporting evidence if any. If the Trademark Examiner finds the reply sufficient and addresses all the concerns raised by him/her in the Examination Report, the application would be allowed to be published in the Trademark Journal, before registration.

Trademark Examination Report

Once a trademark registration application is submitted and examined by a Trademark Officer, a trademark examination report is sent to the trademark applicant or the person authorised by the trademark applicant. The trademark examination report is also put up on the trademark office website along with details of the trademark application. The applicant or the authorised agent then has a chance to submit a reply to the trademark examination report with a rebuttal, if there is an objection by the trademark examiner. The response is then considered, and if the objections can be waived on the basis of the applicant's response, the trademark application is accepted for registration, and the trademark is published in the trademark journal.

How to Reply to Trademark Examination Report

The response to an objection in a trademark examination report can be submitted by the trademark applicant or by an agent authorised by the trademark applicant as the "Reply to Examination Report". The response can be submitted online through the trademark office website or could also be submitted by person or post. Any affidavit and supporting documents should also be submitted along with the Reply to Examination Report.

Objections as to Formality Requirement

In case of objections as to formality requirement(s), the trademark applicant should comply with the requirements as desired by the office. For example, if the trademark office has called for consent of a person whose portrait appears on the trademark, the trademark applicant may submit the consent from the person in writing with supporting documents or state that portrait appearing on the trademark is not of a particular person, but is a general picture of a man or woman.

Objection as to Wrong Classification of Trademark Class

In case of objection due to the goods or services mentioned in the application do not fall in the correct trademark class, the trademark applicant may file a request for correcting the class or state that as per classification of goods or services published by the Registrar, goods or services have been rightly classified.

In case of objection to the effect that some goods or services mentioned in the application do not fall in the class, the applicant may file a request for amendment of the application by deleting items that do not fall in the relevant class. The applicant can also state that as per the classification of goods or services published by the Registrar, all items fall in the class mentioned in the application.

It is important to get proper legal advice as to the correct classification of goods and service, prior to submitting a Reply to Examination Report for objection as to the wrong classification of trademark class.

Objection as to Trademark Lacks Distinctiveness

In case of objections as to non-distinctiveness of the trademark, the applicant can submit a reply to examination report establishing that the trademark applied for registration is capable of distinguishing the applicant's goods or services; or the trademark has acquired a distinctive character in view of its extensive use in relation to relevant goods or services, before the date of application. If the trademark has acquired distinctiveness by virtue of its extensive use, the applicant should file an affidavit as evidence of the use of the trademark along with supporting documents.

Objection as to Identical or Similar Trademark Exists

In case of objections on relative grounds of refusal because of identical or similar trademarks in respect of similar goods or services, existing on records, the applicant may submit in reply to examination report that trademarks cited as conflicting marks in the examination report are different than the applicant's trademark, along with supporting evidence. In addition, the applicant can also produce consent or no objection from the proprietor of marks cited as conflicting in the examination report.

Top Reasons for Trademark Objection

The following are the top reasons for trademark objection:
Use of Incorrect Trademark Form
In case the trademark application is not made on the proper form, an objection as following is raised by the Trademark Examiner. "The application is made on Form TM-1, for certification mark in respect of goods or services falling in a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16."

Corrective Action: The applicant can overcome this objection by requesting to correct trademark application by filing a request on form TM -16.