Understanding Trademark Objection and How to Respond to a Trademark Objection?

What is Trademark Objection?

Trademark objection is one of the initial stages in the trademark registration process where the trademark examiner objects to your application due to certain reasons. It can be filed by either the Examiner/Registrar or any third party. Trademark Objection simply doesn’t mean refusal of trademark registration application but in fact, significantly demands a sense of clarity regarding the trademark that applicant has opted for registration. 

 An Examiner/ Registrar may file an objection under Section(s) 9 (Absolute Grounds of Refusal) and 11 (Relative Grounds of Refusal) of the Act on primarily two grounds –

1. If the application contains incomplete/wrong information ; or
2. If there is already a similar trademark(s) in existence.

The third-party can also object trademark in the name of public interest. Two ways when a public or third party can object the registration of trademark-

1. When the mark is published the Trademark Journal or,
2. When the applicant uses the mark before its registration

Reasons for Trademark Objection:

The following are some of the most common reasons for trademark objection:

1. Applicant’s wrong/incorrect data
2. Lack of distinctiveness in trademark
3. The trademark serves as a description of the company’s services and products.
4. Pre-existence of a similar trademark
5. Disrespectful to any religion.
6. Insult to the national flag and emblem…
7. Filing incorrect form
8. Filing under wrong trademark class
9. False specifications
10. Mismatch of the affidavit

Time Period for Trademark Objection:

The third-party can file for the objection of trademark within the period of three months which may be extended to an additional one month from the date of publication of such trademarks.

Procedure for Trademark Objection in India:

The following steps are involved in the process for the objection of trademark in India-

STEP 1: Notice for Trademark Objection

Any person can file for a notice of objection on a trademark that has already been advertised and published in the trademark journal within 4 months from the date of advertisement.

STEP 2: Counter statement

The applicant can file for the counter-statement within 2 months from the date of the receipt of notice of trademark objection. If not done so, the applicant seems to have abandoned the Trademark application.

STEP 3: Evidence in favour of Objection

The applicant may by way of an affidavit, can file for the evidence in favour of the objection of trademark. The applicant can also write to the Registrar of the Trademark stating that the applicant does not want to file evidence but instead intends to rely upon the facts stated in the notice for trademark objection.

STEP 4: Evidence to be submitted in favour of reply

The opponent party is provided with a duration of one month which may extend for a period of another one month in order to file for evidence in response to the applicant’s evidence.

STEP 5: Final Hearing

Based on all of the above points and the evidence produced and submitted, the Registrar shall call for the hearing. The parties within the period of 14 days from the date of receipt of the notice of hearing shall notify the registrar for their appearance in the matter. Thus, the matter is then heard by the Registrar of the Trademark and then decided on the basis of merits.

STEP 6: Final Decision

After the hearing on the matter, the Registrar finally delivers the decision. If the decision is in favour of the applicant, then such application is registered as per the Trademark Registration Act. However, if the decision is against the applicant, such Trademarks are considered to be objected by the Registrar.

Documents Required for Trademark Objection Reply:

The following documentation is needed for trademark objections process:

• Report on authorised document
• Trademark examination report
• Identification documentation
• Process for address verification in trademark opposition

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Note: This Post was last updated on March 18, 2023

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