How to Avoid Rejections of Trademark Registration?

Trademark is a part of Intellectual property rights that consists of logo, designs, and signs etc so as to distinguish the products from the others. A trademark for a product helps to protect it from being misused by others. A trademark can be registered under the Indian Trademarks Act, 1999[1]. However, sometimes a trademark can be rejected on various grounds. Therefore, there is a need, for a person applying for trademark registration to know how to avoid rejections of Trademark Registration.

This article will help you to understand the reasons for the rejection of the trademark and how to avoid it.

What is a Trademark?

A trademark means any mark such as a logo, design, sign, word, etc which is used for a brand to create a distinctive identity from the other brands in the market. The mark helps to build a reputation for the business of the trademark holder. Trademark helps to provide uniqueness to a brand and helps the people to trust such a brand once the mark is registered. Having a trademark registered is, therefore, necessary for any brand to avail all the advantages upon the registration.

What is the procedure for Trademark Registration?

• Choose a Brand Name
• Apply for the trademark application on the portal of Trademark Registry
• Apply using the correct form depending upon the type of trademark required
• Submit the form and wait for allotment number
• On satisfaction of the registrar, the trademark registration certificate shall be issued to the trademark holder.

Trademark Application Rejection- Reasons

The trademark application for the registration can be rejected by the examiner appointed by the Trademark Registry if on the examination of the application the examiner is not satisfied with the application on various grounds. Such grounds of trademark objections are specified under section 9 and section 11 of the Trademarks Act.

Section 9 – Absolute grounds for Refusal

Section 9 of the act specifies the absolute grounds for the refusal of trademark registration. Under this section any mark is rejected which is: –

• Generic
• Descriptive
• Deceptive of origin of the goods and services
• Deceptive in nature of the goods and services
• Deceptive in the quality of the goods and services

Section 11- Relative grounds for Refusal

Under this section, there are certain relative grounds for the refusal of trademark registration by the registry. Those marks are rejected which are similar to an already existing well-known trademark. Such marks are likely to create confusion in the minds of the people because of the similarity and identity with a well known registered mark. Therefore, under such circumstances, the trademark is rejected by the Registrar.

Sometimes, the Trademark Registrar may refuse to register a Trademark on certain grounds and reject the application. The following are the reasons for which a Trademark can be rejected: –

• Use of offensive words
• Use of generic terms
• Patriotic marks
• Descriptive terms
• Deceptive marks
• Obscene marks
• Use of surnames as marks
• Already used marks

How to Avoid Rejection of Trademark?

· Conduct a proper Trademark Search

The applicant applying for the registration of a mark must do good extensive research before applying it. It is necessary for the applicant to look for a mark which is unique and has a distinct identity from the already existing marks. Before the submission of the application, the applicant must correct or make changes to the application and verify it carefully so as to avoid future rejection of Trademark Registration.

· Avoid Deceptive marks

The mark that is chose by the applicant must be unique. It is necessary for an applicant to be very careful while choosing a mark for his own brand as it should not be deceptively similar to the already existing well-known mark. Therefore a mark which has its own separate identity must be chosen by the applicant before applying for the registration of a trademark.

· Avoid offensive Marks

The applicant must choose a mark which is not offensive to the people or against public morality and order. Therefore a mark which is offensive in character will automatically be rejected by the registrar and therefore the applicant must avoid choosing such a mark.

· Avoid Descriptive mark

Marks which are common cannot be used for a brand. If a mark contains any descriptive term that is commonly used for example the word sweet for selling products like chocolates or candies will be rejected by the registrar. Therefore, the applicant should not use a descriptive mark for his brand.

· Avoid obscene marks

The applicant must avoid using of slang words, provoking terms, repulsive words as it will get rejected by the registrar.

· No Generic Terms

Those Trademarks which represents the particular activity of a product or the actual business idea are likely to get rejected by the registrar due to the use of the generic term. Therefore, the applicant must avoid using generic terms for a product.

· No use of Patriotic Mark

If a trademark consists of an official name, flags, national emblem, animal image, states, international organisations etc then a mark is rejected by the registrar. Hence no mark should be used by the applicant for his brand which is patriotic in nature.

What happens when the Trademark Application is rejected?

If the application submitted by the applicant is rejected by the registry on the grounds as mentioned under Section 9 and 11 of the Indian Trademarks Act, 1999, the applicant has a right to make an appeal to the Appellate Board against the registrar of the trademark registry. The appeal can be filed within three months from the date of the rejection of the Trademark. However, the date can be extended on specifying the reasons for not filing the appeal within the stipulated time to the concerned authority.

Conclusion

Registration of a Trademark is an important part for every person who needs to protect and promote his brand in the market. Without the registration process, a brand can suffer from Trademark infringement and no legal aid can be availed for the same. Therefore, a person applying for registration of a Trademark must apply the application carefully and avoid rejections of Trademark Registration of his mark dues to various reasons. There are certain ideas which are needed to be kept in mind to avoid rejections of Trademark Registration application which has already been discussed in the article.

Also, Read: What is the Minimum Age for Company Registration in India?