Trademark objection is a part and parcel of the registration process. After the application for registration of a trademark is submitted, the application is allotted to an Examiner whose job is to examine the application under the provisions of the Trademarks Act 1999 and the Rules. Any Officer assigned with the duty of examining the applications comes under the definition of Examiner.
The Examiner examines the application and raises an objection on a trademark which does not meet their legal norms. There can be a number of reasons for objection of a trademark. Filing a response to a trademark objection does not guarantee that the trademark will get registered. The trademark cannot get registered unless the Registrar, based on the facts of each case, approves the registration.
The official website of Trade Mark Registry updates the status of a trademark application regularly. It is important for the applicant to check that status on a regular basis so that if an important step needs to be taken, they are well aware of it and are prepared to response or take action for the same. The examination report of the Examiner also gets updated in the website and if an objection is raised, the applicant is given a time period of thirty (30) days from the receipt of examination report, to submit a reply for such objection.
The Examiner thoroughly examines the application and then prepares a consolidated examination report, as far as applicable, for:
- All the objections relating to formality requirements as to filing of application
- Objections to acceptance of the application for registration of the trademark
- Proposals for conditions of acceptance or limitation to use of the trademark, in case the application is accepted for registration
The reply to the objection raised by the Examiner in the examination report should show why the trademark should be registered. The applicant can show facts, evidences, and exhibits to support his request for the registration of the trademark. If an applicant fails to submit a reply within the given time frame, the Registrar has full rights to consider the application as abandoned.
Reasons for Trademark Objection
- If the application is not in proper form
If the form is not correct, the examiner raises an objection so that the applicant can use the correct form.
- If the name of the applicant is not appropriately mentioned
The name of the applicant claiming to be proprietor of the trademark should be properly mentioned in the application. If the name is not mentioned appropriately, the Examiner raises an objection for the same.
- If no proper Power of Attorney is submitted
In case no proper Power of Attorney is submitted, the examiner communicates his objection asking for a duly stamped one.
- If the Principal Place of business is not mentioned
The examiner has to communicate the objection if the principal place of business is not mentioned or if the applicant has no principal place of business in India.
- If the trademark is not in Hindi or English language
If the trademark applied for registration is in a language other than Hindi or English, the examiner ensures that a transliteration is properly mentioned in the application. If it is not, the examiner defers the application and communicates it as deficiency to the applicant.
- If, In case of representation, the consent of the person or his legal representative is missing
If the trademark applied for registration contains a name or representation of a person, the examiner ensures that the consent of the person or his legal representative is submitted. If the consent of the person or his legal representative is absent, the examiner raises an objection for the same.
- If specification of goods or services is not clear
In case the specification of goods or services mentioned in the application is too wide or vague, the examiner raises an objection to this effect.
- If the application falls under the category of relative grounds for refusal
The examiner makes a search of same or similar trademarks in respect of same or similar description of goods or services and in case such earlier trademarks are found in the name of persons other than the applicant, he raises an objection to acceptance of the application for registration on relative grounds.
- If the application falls under the category of absolute grounds for refusal
The examiner examines the application to see as to whether the trademark applied for registration is capable of distinguishing goods or services of one person from those of other and its registration is liable to be refused under section 9 of the Trade Marks Act. If the application is liable to be refused on absolute grounds, the examiner communicates the objection for the acceptance of the same.
In all of the above mentioned cases, an applicant can submit a reply to the objection with the missing information, if any; correct information if there has been a mistake and evidences wherever needed. After assessing the application thoroughly, the examiner prepares a consolidated examination report which is further sent to the supervising examiner who, either approves the report or send it back for re-examination. All the examination reports approved by the supervising examiner are released on the date of the approval and are made available on the official website with status of the relevant application. The report is also sent to the applicant or his authorised agent on his email. After being thoroughly examined, and getting a go ahead from the supervising examiner, the trademark is advertised in the Trade Mark Journal. The process of opposition, if any, starts after this step.