Trademark Objection

Trademark Objection or the Trademark Examination Report comes at initial stage of Trademark Registration process. After filing the application for trademark registration, if the trademark examiner is of the view that he needs some further explanation regarding the trademark application in question. Trademark objection is not a denial to trademark registration, but it is an opportunity given to the applicant to explain how the said trademark fits the criteria to avail registration.

There may be several reasons of trademark objections like its similarity with existing trademarks or it is objectionable or it is not a unique mark.

Protecting a trademark is very important if you want to maintain uniqueness or your brand from others. A registered trademark creates a brand which is different from others and it is your exclusive right. However there are some cases when someone would stop you from using your brand on various grounds. It is very important to understand the reasons of trademark objections.

There may be various grounds on which a trademark may be objected. A trademark may be generally objected on absolute grounds or refusal or relative grounds of refusal which are conflict or similarity with the other trademarks or prohibition of registration of such marks etc. We have discussed few grounds on which the trademark may be objected:

Trademark lacks distinctive character

The trademarks which are not capable of differentiating themselves between the goods or services of applicant and goods or services of others can be objected.

False or vague specification of goods

When the specification of goods or services mentioned in the trademark application is vague or it includes a large variety of goods or services, the trademark may be objected. The examiner may raise an objection saying that the specification of goods or services mentioned in respect of Class XX is very vague and wide. He may require the applicant to provide exact items for which the registration is required.

Deceptive Mark

Any trademark application which may confuse the people at large about something which is inherent in the mark itself like geographical origin of goods or nature and quality of goods or services may be considered as deceptive mark. Such objection may be handled by filing Form TM – 16 with the trademark registrar.

Incorrect Trademark Form filing

If a trademark application is filed using incorrect form for application the examiner may raise objection saying that “The application is made on Form TM – 1 for certification mark in respect of goods or services falling in a class, the form of application should be corrected as TM – 4 by filing a request on form TM – 16”

Incorrect name of applicant

There are chances that the trademark is marked for examination i.e. an objection is raised when the applicant name on the application is mentioned incorrectly or the names of partners are missing etc. The applicant may get objection saying that “The application appears to have been filed in the name of partnership firm, the names of all partners should be brought on record by filing request form under TM – 16”

Incorrect address on the Trademark Application

In some cases the principal place of business is either not mentioned in the application or it is missing. In some cases where the applicant does not have principal place of business in India, has not mentioned address or service in India. In these cases the examiner may raise an objection saying that “The Principal place of business of the applicant should be brought on record by filing a request in form TM – 16” or “The applicant’s address for service in India should be brought on record by filing a request on form TM – 16, since the applicant has no principal place of business in India.”

Existence of Similar Trademark

If the examiner is of the opinion that there are same or similar trademarks of other owners are on record and the trademark applied for is for the same or similar services, he may raise an objection for the same.

After a trademark application is submitted and the trademark is examined by the trademark examiner, if the examiner is of the view that there is some discrepancy or further detail requirement, an examination report may be sent to the applicant or its authorized representative. The examination report is also made available on trademark office website.

On receipt of examination report by the applicant or its authorized representative, the applicant may decide on the merits of objection whether or not to file a reply to examination report.

On filing reply to examination report, if the examiner is satisfied with the reply he may waive off the objection and accept the trademark for registration. In case the examiner is not satisfied with the reply, the applicant gets chance of being heard in person or through video conferencing.

On receipt of the examination report and on deciding to go ahead on merits, the applicant or the authorized representative may file a reply to examination report. The reply to examination report may be supported by affidavits and documents in support of application. The reply may be filed online through trademark office website or in person or by post.