How to deal with the Objection in Trademark Application

Authored By – Karan Gautam

How to deal with the Objection in Trademark Application

Introduction

The World Intellectual Property Organisation (WIPO) defines a trademark as a symbol that can be used to differentiate the products or services of one company from those of another. Apple, Windows, Jio, Zara, Dell, and UrbanClap are a few well-known brands that have established a unique presence in their esteemed markets. Making sure that customers can recognize products and services simply by glancing at the company name or logo is the exclusive goal of a trademark.

A trademark: what is it?

Enterprises identify their products with logos, designs or particular combination of words which distinguish them from competition. Consequently, these graphics and words facilitate more convenient recognition by consumer(s) regarding brand, quality and even source of product(s). As a result, these marks which they use while conducting business are referred to as trademarks. According to Indian laws protecting intellectual property rights infringements, they are referred to as trademarks since that term represents its commercial form.

The Trademark Act regulates trademark registration, protection as well as penalties for infringement (referred hereafter in this paper simply as ‘Act’), 1999. This type of coverage is meant for both parties: company and client alike. A trademark can only exist under the Act for ten years and can be renewed ten more years when renewal costs are paid in time.

Who is eligible to submit a trademark application?

Any person, group of people or legal entity like a company or limited liability partnership (LLP) that would like to add a distinct identity to their business may apply for a trademark. When a trademark is registered it implies that the products or services have an attribute distinguishing them from others on the market. By using section 18(1) of the Trade Mark Act, 1999 which defines person as any individual, this may be done by anyone in need of such help as an advocate or a trade mark agent applying to registrar’s office.

Registering a Trademark?

Section 18 of the Act outlines the trademark registration procedure. It may take one to two years for a trademark to be registered after you submit your application. You will receive an allocation number after submitting your registration application, which you may use to track the progress of your application. Here’s how the procedure works:

• The first place where the mark will be entered into Vienna Codification.
• Thereafter, they will go through all formalities checking that appropriate documentation has been included in the application form.
• Then it will be marked ready for an examination. This means that it shall be sent to an examiner who will check the score against the act for any infringement.
• If there are no issues, then an exam report is issued.
• The exam report is followed by the mark being published in the Trademark Journal which is an official release.
• After publication in the Journal, there may be a period of objections from public and other persons for three months or beyond within which trademark’s registration can still be challenged.
• In case there are no objections, then the trademark will be registered and the applicant will receive a certificate of registration and he will be protected from third parties within 10 years after filing date.

Objection

One of the first steps in the registration procedure is an objection. The Examiner/Registrar or any other third party may file it. Under Sections 9 (Absolute Grounds of Refusal) and 11 (Relative Grounds of Refusal) of the Act, an Examiner/Registrar may object based on two main grounds:

• If there is already an existing trademark or trademarks that are similar, or
• If the application contains inaccurate or insufficient information.

The registration of a trademark may be challenged by a third party on grounds of public interest. A third party has the opportunity to object to the registration of a trademark in two different ways.

• Upon publication of the mark in the Trademark Journal or,
• When the applicant uses the mark before its registration. In this instance, the application’s status will be modified to Adv Before Acceptance.

When an objection is submitted, the application’s status is changed to “Opposed.” The oppositional party must state his reasons for opposing the trademark’s registration in his objection letter. The examiner will provide the applicant a fair chance to contest his application by the procedures outlined in the Act.

How to respond to an Objection?

The applicant will receive appropriate notice of the objection and its grounds as soon as it is lodged.

• The first thing that needs to be done is filing a counter statement against the objection.
• This must be accomplished within two months after receiving notice of objection.
• An application that received no objection within two months gets abandoned.

Following the filing of the counter, the Registrar may schedule a hearing; if he finds it in the applicant’s favor, the trademark will be registered. Should he decide in the other party’s favor, the trademark will be struck from the Journal and the registration application will be denied. An appeal may now be submitted by the applicant to the Intellectual Property Appellate Board (IPAB):

• The appeal must be submitted within three months of the Registrar’s order date.
• If an appeal is submitted after the three-month window has passed, the petitioner must justify the delay along with a Rs. 2,500 fee. The appeal will be scheduled for a hearing if the IPAB accepts the justification.
• The TradeMarks (Applications, Appeals, and Fees to the Intellectual Property Appellate Board) Rules, often known as the Trademark Rules, must be followed for the file to be accepted.
• The applicant is required to verify all of the supporting papers.
• On the day the application is presented, the Deputy Registrar must then endorse each application.
• The Deputy Registrar will notify the applicant of any errors he discovers in the application.
• The applicant has two months to correct the errors and resubmit the application.
• The Deputy Registrar will consider the application abandoned if it is not submitted.
• If the application is deemed to be in order, the Deputy Registrar will register the case and will allow it a serial number.

The IPAB will hear the case after it has been filed. The site of the hearing will be decided upon the jurisdiction under which the case arises according to rule 2(m). A time will be announced for the case hearing. As so, the hearing will take place.

• The submissions from both parties will be the basis for the IPAB’s decision in this case.
• On the day of the hearing,
• if one party does not show up, the IPAB may:
  • Decide about the case’s merits; 
  • Issue an ex parte order (where one side is not present).
  • Throw out the case.

For when the case is dismissed or decided in absence, there is a thirty-day window from the date of ruling to file a petition challenging the earlier order. The IPAB’s decision will be affirmed and the case will be held. The applicant may appeal with such authority as may be appropriate to the High Court if he feels aggrieved by this ruling of IPAB. Additionally, India’s Supreme Court does have power to hear further appeals.

Conclusion

What creates your brand and what sustains it are both important. By replying on time to your TM objection one can save money, time and reputation damage. Failure to do so might lead to withdrawal of your trademark application. Ensure that in using your brand name you do not violate any law. To ensure you do not go through trouble check thoroughly whether your desired brand name has already been registered. Remember Vakilsearch; we know trademarks and TM objections best as well as all other legal issues that can now be easily handled.