Trademark objection is one of the biggest challenges while getting your trademark registered. On an average basis 70% trademark application gets objected. Due to trademark objections, trademark application takes substantial period of time for approval. There may be various reason which leads to objections.
Trademark Act 1999 (Intellectual Property Right) has provided certain provisions which talks about grounds for objection. Generally objection comes into the picture when proposed trademark is similar or identical to already registered trademark. On other hand, Trademark Act 1999 provides certain restriction and if someone violates these restrictions then application may face also objection.
Under Trademark Act 1999, Section 9 and Section 11 provides the ground whether concern officer can raise objection. These 2 sections which work independently and an application can be objected under any or both of the above section.
On the basis of consolidated reading of both sections, following objections may come arise which will lead to refusal of trademark application:
- Words which are general in nature can be use by anyone like Tiger, King,
- Words which can mislead to general public like Very good, Superb, Powerful, 100% Guarantee, Sure
- Words which are belongs to God’s Name like Jai Shree Ram, Guru Nanak
- Some specified words like India, President, Chief Minister
- Word or Mark which is similar or identical to existing registered brand name
- Word or Mark which have same pronunciation like existing registered brand name
Before refusing an application an opportunity of being heard an opportunity has to be given to applicant. This opportunity is given through issue of examination report. Whenever officer understand that filed application is liable for refusal he shall issue examination report and mention ground for objection which leads to refusal.
Objection arises on the basis of examination report issued by concerned officer. This examination report can be challenged by submitting reply to such officer. If applicant understand that objections raised by officer is not appropriate as per Trademark Act 1999 then he can mention the grounds and request the officer to grant trademark registration.
Applicant is liable to submit reply to examination report within 30 days of issue of examination report. Once reply is received by officer from applicant, officer is liable either to accept it or reject it. Further if officer understand that reply submitted by applicant is not complete then he may ask applicant to come forward for hearing. At the time of hearing, officer either can accept or reject the plea of applicant.
Hence it is clear that reply to examination reports plays most important role in getting your trademark registration. It is highly advisable that reply must be written by expert professionals who have vast experience to drafting of trademark replies.
Once your reply is accepted by Trademark officer your trademark status gets change to Accepted from Objected. After getting status of accepted, application becomes liable has to be published in trademark journal. Once it’s published anyone (third party) can file oppose petition against accepted trademark. If no opposition received within 120 days of publication, trademark becomes registered brand and applicant can use R with his registered brand.
The trade mark status changes from “Advertised” to “Opposed” when a notice of opposition is filed by a third party. At a same time, notice of opposition is served on the applicant. Under such notice grounds for opposition is being mentioned. Applicant can file counter statement within 60 days of issue of opposition notice. If applicant does not file reply, the trademark application will be abandoned.
Once the counter statement is filed by the applicant and served, the opponent is required to file the evidence in support of opposition within 2 months from the date of receipt of counter statement. This process may take years which may end either with trademark registration or refusal.