What is a Trademark? A Trademark is a special logo or a brand that can be used for distinguishing your products from your competitors. By trademark registration, you can protect...
When you file an application for Trademark Registration, then there are two possibilities. Either your request for the proposed Trademark will be accepted, or it will get rejected. There are several reasons for trademark objection in India.
According to Section 9 of the Trade Marks Act, 1999, the trademark officer can either accept the application or raise an objection against it on one or several grounds.
Therefore, before you apply for trademark registration, you must ensure that your application is complete and that you have filed your application appropriately.
Hence, to save you from trademark objection, we have listed top reasons due to which the trademark application stands objected by the trademark officer.
What is Trademark Objection?
Trademark Objection is the preliminary stage in the trademark (TM) registration process where the trademark examiner raises an objection against the trademark application due to a number of reasons.
The applicant gets an opportunity to prove how his/her Trademark fits the criteria for availing the valid registration. It is called the trademark objection reply.
Mainly, there are two crucial reasons on which the trademark examiner objects to the application. They are- a) either the applicant is incomplete or contains wrong information, or b) similar Trademark exists.
However, there are multiple other grounds on which an objection is raised. We have described all of them later in this blog.
Various Reasons for Trademark Objection in India
If the applicant violates any of the Trade Marks Rules, then the examiner holds the complete authority to object to the filed application through an examination report.
A trademark objection could take place due to the various reasons as follows:
1. Incorrect Name of the Trademark Applicant
The trademark applicant must mention his name correctly in the TM application. In case he hasn’t done so, the trademark examiner will raise an objection to his application.
One can reply to the objection or overcome it by filing a trademark form TM-16.
2. Incorrect Address on the Trademark Application
If the applicant mentions the incorrect address of the principal place of business, or if he doesn’t mention the address, then the examiner will raise the objection against it.
The applicant can correct this objection by filing a request in the TM-16 form.
3. Failure in filing Trademark Form TM-48
If the Trademark Attorney or Trademark Agent file the trademark application on behalf of the applicant, then the applicant must attach the TM-48 form. In the case, the trademark registry doesn’t find form TM-48 attached, or if it is incorrectly executed, then the examiner could raise the objection.
Hence, if the applicant wants to rectify the objection, he/she needs to file form TM-16.
4. Filing of Incorrect Trademark Form
If you have not made the trademark application on the appropriate form, then the TM examiner holds the authority to object to the filed application. Moreover, the objection will read as follows:
“The application is made on TM-1 form, for certification mark in respect of goods or services falling in a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16.”
Hence, the applicant needs to overcome this objection by filing a correct trademark form by making a request on form TM-16.
5. Trademark filing under the Wrong Trademark Class
One of the most important things to consider while filing a trademark application is to choose the right trademark class. However, if you have chosen the wrong trademark class, then your application will get rejected. Further, the status of your trademark class will stand as ‘Objected.’
Therefore, you must verify that the trademark class you have chosen is correct. If you are applying for a Trademark for your services, then you must choose the service class, i.e., from 35 to 45. However, if you want a trademark class for goods, then you must choose from trademark class 1 to 34.
6. The proposed Trademark already exists
If the proposed Trademark already exists, then the TM officer will not approve it and raise the objection.
In such cases, the applicant needs to submit a reply to the trademark examination report. In the response, he must state that the cited Trademark as a conflicting mark in the examination report is entirely different from the applicant’s Trademark.
Furthermore, the applicant must provide supporting evidence to the same.
7. Trademark lacks distinctive character
The proposed Trademark must distinguish the products or services of one person from those of the others. In case it contradicts with another person’s, then his application will stand objected. Hence, your Trademark lacks distinctive character.
In order to rectify this objection under absolute grounds for refusal, the applicant has to submit evidence regarding the mark that it consists of a distinctive character by virtue of its proper use.
8. Vague specifications of Goods and Services
At the time of the trademark application filing, one needs to be very specific. However, in the case you have specified the goods and services casually, which contains a huge variety of the same, then the TM examiner will raise the objection against the same.
To overcome this objection, the applicant must file TM-16 and request for a change in the original form.
9. Deceptive Trademark
The trademark examiner can raise an objection against the Trademark if the latter founds that the proposed Trademark is deceiving the public by any means such as through its nature, use, quality or geographical origin of the products or services.
One can overcome the objection of the deceptive Trademark by filing TM-16 Form.
10. User affidavit not attached
A User Affidavit is a crucial document that a trademark applicant needs to submit to the Trademark Registry. The affidavit helps applicants to claim any prior date of the usage to their Trademark.
If the applicant is using the Trademark prior to filing an application, then he/she must furnish it.
However, if the applicant doesn’t submit it, then the registry will create an Objection on the Trademark as it is an obligatory document for claiming the date of prior use.