A trademark functions as a unique marker used by businesses and organizations to differentiate their goods through symbols, patterns, or specific groups of expressions. Frequently, in the course of trademark registration, an objection may be raised by either the Trade Mark Registrar or a private individual. This article goes into the necessary measures to respond when trademark gets objected.
Understanding Trademarks
Before going into how to respond when trademark gets objected, let us see what a trademark is. A trademark acts like a labelling aid in customer acknowledgment of the identity, quality of goods, and even the source of the product. In India, trademarks are granted intellectual property status, providing them protection against violation under applicable regulations.
The Trademark Act of 1999 on trademark oversees the legal aspects of trademarks, covering registration, protection, and associated consequences. This legal structure aims to protect the interests of both the entity holding the trademark and the consumers. Trademark registration under the Act is initially given for a period of 10 years and can be even extended for another 10 years, if all fees is paid on time.
Understanding Trademark Registration
Let us now look at trademark registration before understanding how to respond when trademark gets objected. The process for registering of a trademark is as per Section 18 of the Trademark Act. Following the application, a tracking no. is assigned to monitor the application status.
The successive steps in the registration process are as follows:
- Vienna codification: The symbol undergoes Vienna encoding as initial step.
- Form Check: A check for formalities is carried out to ensure that application is accompanied by all necessary documents.
- Scrutiny: The mark undergoes examination by a designated evaluator, who assesses it for any potential violations of provisions outlined in the Act.
- Examination Report: If no issues are identified during the evaluation, an evaluation report is issued.
- Publication in Trademark Journal: Subsequently, the approved symbol is published in the official gazette, specifically the Trademark Journal.
- Challenge Period: A public notice is provided in the journal, initiating a three-month window (extendable by an additional month) for the public or third parties to raise challenges to the symbol registration.
- No Challenges: If there is no challenges during the given said period, the mark is officially registered. The applicant is then provided with a registration certificate, so as to offering protection for a duration of ten years from the date of the initial application.
Understanding Trademark Objection
Let us now look at trademark objection before understanding how to respond when trademark gets objected. The opposition phase is an important step in the early stages of the trademark registration procedure and can be initiated by the Examiner either or the Registrar or any third party. The Examiner or the Registrar may also raised the objections under Sections 9 (Absolute Grounds of Refusal) and 11 (Relative Grounds of Refusal) of the Act, which are based on two grounds:
- Incomplete/Wrong Information: Objections may arise if the application contains inaccurate or incomplete information.
- Similar Existing Trademarks: Objections can also be raised if there is already a similar trademark in existence.
Third parties can also choose to oppose trademark registration in the interest of the public through these:
- Publication in the Trademark Journal: Third parties can oppose the mark when the trademark is published in the Trademark Journal.
- Usage Before Registration: Third parties can also choose to oppose when the applicant starts using the mark before its formal registration, leading to a change in the application status to “Adv Before Acceptance.”
Upon filing an opposition, the application status transforms to “Opposed.” Those opposing the registration must articulate the grounds for their opposition. The Examiner then grants the applicant an opportunity to defend the application, following the procedural guidelines outlined in the Act.
Procedure on How to Respond When Trademark gets Objected
Upon acknowledgment of an opposition, the individual seeking approval needs to take the subsequent actions to respond when trademark gets objected:
1. Submit a Counter Statement:
- First to respond when trademark gets objected, within two months from receiving the notice, the individual must submit a counter statement to the opposition.
- Failure to respond when trademark gets objected within this timeframe will lead to a change in the application status to “Abandoned.”
2. Decision by the Regulatory Authority:
- After submission of the counter-statement, the regulatory authority may request a hearing.
- If the regulatory authority decides in favour of the person seeking approval, the trademark will be officially registered.
- If the decision is in favour of the opposition, the trademark will be excluded from the Journal and the application for registration will be refused.
3. Appeal to the IPAB:
- In case of unfavouring decision, the person seeking approval may file for appeal to the IPAB within three months from the order of the regulatory authority.
- If the appeal is submitted beyond the period of three months, the person must provide the reasons for causing such the delay and submit an apology for the delay, together with a penalty of Rs 2,500.
4. Hearing at IPAB:
- Once the case is registered, the IPAB will arrange a hearing.
- The location of the hearing is determined by the jurisdiction under Rule 2(m).
- The IPAB will make a decision based on submissions from both parties.
5. Potential IPAB Outcomes:
- If one of the party are absent during the hearing, the IPAB can made the decision on the merits, issue an ex parte order, or even dismissal of the case.
- In case of dismissing or an ex parte ruling, a 30-day period is granted to file a petition against the order.
6. Further Appeals:
- If not full satisfied with the IPAB order, the individual seeking approval can make appeal to the High Court also.
- Also appeals can also be filed with the Supreme Court of India.
Final Thoughts
To respond when a trademark gets objected, a fast-track process is critical. On receiving of a notice of objection, a person have to file a reply within two months stating the reasons for the objection. Successful protection at this stage requires the registration of a trademark. On other hand, an adverse decision requires an appeal to the IPAB within three months. It is important to adhere strictly to procedural rules to respond when trademark gets objected, correct deficiencies identified and ensure timely delivery. If they are not satisfied with the IPAB decision, they can appeal further to the higher courts.
