How to file a Trademark Objection Reply?

Companies while trading their products use different logos, symbols, designs, marks or words to easily distinguish their products from the others. This ensures that there are a distinct identity and no similarity in the packaging, brand name, quality of the product and many other features sold by one company from another. Therefore, in simple terms, trademark means distinguishing the product of one company by using various marks, from the other companies in the course of trading.

Trademark helps the company to protect the product that is being sold by them from the other products in the market. This eventually falls under the protection of Intellectual Property Rights (IPR)^[1] and governed by its rules. Any infringement shall result into an offence and liable to punishment and penalties.

The Trademark Act, 1999 specifies all the rules and procedures for the registration and protection of trademark and further any penalties and punishment resulted from any infringement. Not only this act protects the companies, but it equally protects the customers who further have trusted on a particular brand. A company has a right to register its product for a period of 10 years under the Act which can be extended to the next 10 years on the payment of prescribed Trademark renewal fees.

However, at the time of registration, the Registrar can refuse or object to register a certain trademark on various grounds. The reasons for the objection of trademark registration and emendation and how to file a Trademark Objection Reply shall be discussed in this article below.

Registration of Trademark

Section 18 of the Trademark Act, 1999 defines the process for the registration of a trademark. A trademark is registered within a period of 1 to 2 years upon the filing of an application after which an allotment number is provided during the process. The registrar may, upon the satisfaction approve the application and register it. The registration certificate shall be provided to the trademark registered holder.

Grounds for Objection of Trademark Registration

However, the registrar may also object or refuse to move forward for the registration of a mark on various grounds which are in violation to the rules of the act.  Such Online Trademark objection may occur due to the following reasons

• No distinctive identity.
• Marks which are deceptive and cause confusion or mislead the general public.
• Already registered a similar mark.
• Disapproved on grounds of accepted standards of morality and decency.
• Detrimental to a particular religion.
• Forbidden and restrained under the Emblem & Names Act, 1950.
• Wrong/incomplete information in the application.
• Wrong filing of trademark form.

Trademark Examination Report

The application for the registration is undergone various stages so as to either approve it or object if any error or false occurs. Therefore an examination officer performs the duty to check whether the application complies with the rules specified under the Act. If the examiner is satisfied with the application, he shall generate an examination report and allow publishing it in Journal.

In case if any Trademark objection is raised, he shall inform the applicant to submit a reply to the objection giving reasons to allow it. If the applicant fails to submit the reply with the time period of 30 days his/her application is considered as rejected.

How is Reply to the Objection Submitted

The response to the Trademark objection can be done either by the applicant or his agent through online website of the trademarks office or can be done in person or post supported with necessary documents and affidavit while submitting the reply.

Advantages to the Applicant in case of Objection

There are some of the advantages that the applicant gets in case his/her application is subject to objections such as:

• Highlighting the quality or feature of a particular mark- Specifying a certain uniqueness of a particular mark helps the applicant to get the mark registered as the chances become higher from such specification complying with the rules of the act.
• Prevents from being declined or refused
• Makes it easy for the applicant to file a Trademark Objection Reply an appeal instead of filing a new application.

Time Period of filing a Response

The applicant gets a period of 30 days in case of filing a response to the objection.

Also, Read: What are the Reasons for Trademark Objection and How to Respond to them?

Filing of Trademark Objection Reply

Once the application is marked as Objected by the Registrar the applicant shall file a response in the following steps:

Step 1: Examining the Objection in detail in order to interpret it

The applicant studies the Trademark objection carefully so as to understand the reasons and interpret it before filing the reply. The reply must be filed giving due reasons which must be appropriate.

Step 2: Preparing the Response

The Drafting of the Trademark reply has to be quite significant. A proper response must be drafted relying upon various judgments and precedents. It is the Rule of Law which is needed to be applied. The applicant must be specific for making a proper comparison between his mark and the mark in confliction. Once the response is prepared, it must be supported with other necessary documents and the affidavit which is filed along with it either online or in-person or post.

Step 3: Acceptance or Hearing of the Applicant

On this stage, if the Examiner is satisfied with the reply, he shall approve it and allow it further for the registration and publishing it in Trademark Journal. However, if he still does not approve it then he shall serve a notice to the applicant to schedule a hearing for providing reasons and clarifications.

Step 4: Advertising in the Trademark Journal

Once the application is accepted on hearing, the Trademark will be allowed to be published in the Journal.

If the examiner refuses the mark then a Refusal Order is passed along with the valid reasons of infringement.

Step 5: Certificate of Registration

Once the mark is advertised in the Journal, it is made available for the public for scrutiny. If no objection is raised within a period of 4 months, then the mark will continue towards its registration and a Registration Certificate shall be provided to the Trademark registered Holder. However, if an objection is raised then a hearing will take place between the parties in accordance with the rules of the Act.

An appeal in case of Refusal

The applicant can file a Trademark Objection Reply an appeal in case a refusal order is passed by the examiner. A review petition can be filled within a period of 30 days from the date of the order by mentioning the reasons for reviewing.

Conclusion

Creating a brand and making it registered is a very important part of starting a business. For a person/company creating a brand, it is necessary for it to timely make the registration of the mark complying in accordance with the rules specified under the Trademarks Act, 1999. A Trademark Holder has a right to file a reply in case his trademark is in question at the time of the registration. All the rules and procedures must be followed for the registration of the mark and any infringement shall result into penalties under the rules of the Act.

Also, Read: Trademark Objection Procedure by a Company