Businesses identify their services and products with logos, phrases or designs. Those identifying marks are called trademarks. Trademarks have to be registered to prevent them from being copied or improperly handled. But at times trademarks are objected to while registering. The reasons for trademark objections and solutions for solving them are discussed in this blog.
What Is a Trademark Objection?
A trademark objection is a first step in the trademark registration procedure where the registrar or a 3rd party asks if the trademark is qualified for registration. The registration is for 10 years and could be renewed for 10 years with renewal costs. Objections could be for similarity to present trademarks, absence of distinctiveness, or non compliance with trademark laws.
Common Reasons for Trademark Objections
These are the common reasons for trademark objections in India:
- Similarity with Existing Trademarks: Objected trademarks which are too like an already registered trademark could be objected to because of potential confusion among customers.
- Lack of Distinctiveness: A trademark should be distinctive to be registered. Generic or descriptive terms that don’t distinguish the services or products from others might cause objections.
- Prohibited Marks: Some marks are forbidden by law, deceptive, including offensive, and national symbols.
- Non-Compliance with Trademark Laws: Failure to meet the procedural requirements (wrong classification or incomplete application) can result in objections.
Steps to Address Objected Trademark Status
The steps to solve a trademark objection consist of using a checklist of steps to obtain the trademark registered. This is how you can dela with this process:
1. Understanding the Objection Notice
The first is to read and understand the objection notice. The notice will explain the reason behind the objection and the applicant may prepare a reply.
2. Filing a Counter-Affidavit
The applicant has to file a reply or a counter-affidavit within 2 months of receiving the objection. This document should deal with the concerns in the objection notice. How to do it:
- Draft a Response: The reply must be succinct and tackle every point made in the objection. It should show that proof and arguments show the trademark is eligible for registration.
- Submit Supporting Documents: Include supporting documents like uniqueness, previous use, or market presence as evidence of your case.
- Legal Representation: Get an excellent trademark attorney like StartupFino to draft a solid counter-affidavit.
3. Registrar’s Hearing
In case the registrar considers the counter-affidavit good, a hearing might be set. During the hearing, the registrant or their lawyer will provide arguments and proof to support the trademark registration.
- Get Ready for the Hearing: Gather all the documents and prepare a strong case presentation.
- Show Your Case: Present your arguments plainly, addressing the reasons for objection.
- Follow-Up: Follow up with the registrar’s office following the hearing to confirm adequate measures are taken.
4. Petition for Condonation of Delay
In case the counter-affidavit isn’t filed in the two month time permitted, the applicant might file a petition for condonation of delay. This petition describes the reason this particular delay came about and asks for an extension.
- Draft the Petition: Justify the delay and also provide evidence.
- Pay The Penalty: The applicant pays a penalty fee of usually 2,500.
- Submit the Petition: File the petition with the registrar’s office and verify its status.
5. Compliance with Procedural Requirements
Check that procedural requirements are satisfied and the application is error free. The registrar will look at the application for procedural flaws and inform the candidate if corrections are needed.
- Verify Documents: Check all submitted documents for completeness and accuracy.
- Make Corrections: Notified of any flaws, correct them ASAP and submit once again within the specified time (usually two months).
6. IPAB Hearing
When the application is considered correct and complete, it could be submitted for hearing on the Intellectual Property Appellate Board. The IPAB is going to look at the case and make a decision.
- Get ready for the IPAB Hearing: Like the registrar’s hearing, prepare your case.
- Attend the Hearing: Bring your case before the IPAB with arguments and evidence.
- Wait for Decision: The IPAB will review the case and rule. In case the ruling is in the applicant’s favor, the trademark is registered.
7. Appeals Process
In case the applicant is unsatisfied with the Board’s decision the applicant might appeal to higher judicial authorities like the High Court and Supreme Court of India.
- File an Appeal: Draft & file an appeal with the proper court, describing exactly why you contest the IPAB’s decision.
- Legal Representation: Hire competent legal assistance to argue your case in court.
- Follow Court Procedures: Respect all court procedures and timelines for hearings and filing.
Tips to Avoid Trademark Objections
Even in case you can solve trademark objections later, it is advisable to avoid them entirely. Tips for a smooth registration are:
- Perform a Thorough Trademark Search: Search for comparable trademarks to your own before filing for registration.
- Pick a Distinctive Trademark: Select a distinctive trademark. Avoid descriptive or generic terms.
- Follow Procedural Requirements: Check out that your application meets all procedural requirements and classifications under the Trademark Act.
- Get Professional Help: Work with a trademark attorney to assist with the registration and with solving issues early on.
Conclusion
Trademark objections are a challenging part of the registration procedure but are not impossible to deal with. Understanding why objections are made and the way to react will help companies stay away from them and protect their trademarks. Appropriate planning, timely responses in addition to legal help can help resolve trademark objections and protect your brand.
FAQs
How to clear an objected trademark?
To clear an objected trademark, file a counter-affidavit within two months explaining the objection. Make a detailed reply with supporting evidence and in case needed attend a hearing with the registrar. Seek legal assistance to strengthen your case and meet procedural needs.
Can we use a trademark when objected?
Using a trademark that has been objected to is unsafe and will result in legal disputes. First resolve the objection.
How to reply to a trademark objection?
To a trademark objection, prepare a counter-affidavit addressing every point raised in the objection notice. Include supporting documents and evidence your trademark qualifies. Submit the response within the specified time and fulfill the procedural requirements.
What if a trademark is refused?
You could appeal the decision of the IPAB. Prepare an appeal describing the reasons for contesting the refusal. If the appeal to IPAB fails, additional appeals could be brought prior to the High Court and in case needed to the Supreme Court.
In case your trademark is opposed, you have to file a counter statement within 2 months of the opponent’s notice. The case will likely then go prior to a hearing where both sides make arguments. In case the opposition is upheld, the trademark isn’t registered though you can appeal the decision.
How can I appeal a trademark?
To appeal a trademark decision, appeal to the Intellectual Property Appellate Board. Include arguments and evidence for your case. Additional appeals could be submitted at the High Court and Supreme Court in case needed. Follow all procedural requirements and deadlines during the appeal.
