Intellectual property such as trademarks is crucial for a company. Numerous trademark applications are made each year but not all of them are accepted.
The truth is that some trademarks are not registered because they are either abandoned. In order to determine whether an applied trademark is eligible for registration the same goes through formality check and examination as per the provisions of the act to determine whether the same is liable to be refused as per the provisions of Section 9 and Section 11 or whether the mark has some other faults that needs to be cured. If the mark is not registerable as per the provisions of the Act, the Examiner issues an report stating the objections to which the Applicant has to responded as to why the trademark should be registered.
The question stands- How do you respond to Trademark Objection? In this article, we’ll discuss how to respond to trademark objections.
What is the difference between Objection and Opposition?
The fundamental distinction between a trademark objection and an opposition is that an objection to trademark registration is made by the examiner at a preliminary stage following the submission of the application. As opposed to this, trademark opposition is brought forth by anyone who has a problem with a trademark that has been registered after it has been advertised for 4 months in the trademarks journal.
Why is it Necessary to Reply to Trademark Objection
Here are some reasons for reply to trademark objection as soon as possible –
To Prevent Abandonment
To proceed to the next step in the registration procedure, you must submit a response to the examination report. As per the Trade marks Rules 2017, the Trademark Application would be deemed to have been abandoned if the reply to the examination report is not submitted within a month of the report’s dispatch date.
Establish your Mark’s Distinctiveness
The trademark objection reply letter gives the applicant the chance to explain why he or she is qualified to have their mark registered. One can present their views on why the objections do not apply to the TM application and highlight the distinctive qualities of the mark in a written response to the report.
How to File Trademark Objection Reply
It is mandatory to file a Trademark objection reply within the given time frame as to prevent the Application from getting abandoned.
Step-1: Analyze the Trademark Objection
The first and foremost step, is to analyze the objections that have been raised by the examiner and understand the reasons for the same. It will help you give clear and to-the-point replies.
Step-2: Drafting of Trademark Objection Reply
Moving on to the next step of the process, you need to draft your reply to the objections raised in the report. This should be done within a span of 1 month from the date when you received the notice.
Section 9 pertains to absolute refusal whereas Section 11 pertains to Relative grounds of refusal.
Depending on the objection, the Applicant has to establish as to how its mark is distinctive (in cases of Section 9) or how the applied mark is different from the mark cited in the examination report (Section 11).
The Applicant can rely on judgments, details and information about its mark not limited to use, goodwill, reputation, presence in the market or social media.
Step-3: Trademark Hearing
It the Examiner is not satisfied by the reply as submitted by the Applicant, a show cause hearing is scheduled where the Applicant or its authorized representative/ agent can make submissions as to why the mark should be proceed for the registration.
The Applicant can in support of show-cause hearing file documents such as extracts from internet/ social media/ e-commerce websites showing the use and presence of the mark. The Applicant can also attach the invoices pertaining to the goods/ services under the applied mark, any certification applied for in respect of the same, or any other document that support the Application.
Step-4: Publication in Trademark Journal
If the examiner if convinces with the submissions, the mark moves forward with the advertisement in the Trademark Journal. Whereas if the Examiner is not convinces either another hearing is allotted or the mark is refused.
Applicant if believes that the Examiner didn’t consider the submissions of that the refusal order doesn’t consist the reasons for doing so, can move a Review Application within a month from the order or an Appeal to the IPD within 3 months from the date of the impugned order.
Step-5: Registration
After publication, if any third party believes that the mark should not be registered, they have the right to oppose the mark within 4 months from the date of Application. If such an opposition is filed than the registration is delayed as the proceedings of Opposition take place. Whereas if no third-party issue is raised during that period, the trademark further proceeds toward registration, and a registration certificate is issued by the registry.
CONCLUSION
Filing a reply to Trademark Objection is quite important and should be done within the mentioned time and in the right way. It is a very crucial step in your journey toward getting registration and can make or break the case for you.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
