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Trademark Objection
Drafting and filing a reply to the Trademark Examiner's objection. Corporate shastra files trademark applications with exclusive pricing.
INR 2899 All Inclusive
Objection
Attorney-Drafted
Response to Objection
Trademark Objection Process in India
Navigating Challenges with Corporate Shastra
In the realm of business, protecting intellectual property is vital for establishing a brand identity, and trademark registration is one of the key steps. However, during the process of trademark registration, businesses may encounter a trademark objection. At Corporate Shastra, we understand the complexities of this process and assist our clients in navigating through such objections smoothly.
What is a Trademark Objection?
A trademark objection occurs when the examiner from the trademark office raises concerns or issues with the trademark application. It is a preliminary rejection based on specific legal grounds, which requires a proper response to move forward in the registration process. Objections are not an outright rejection; they provide an opportunity for the applicant to clarify or defend the trademark application.
Common Reasons for Trademark Objections
Similarity with Existing Trademarks: If the applied trademark closely resembles an existing registered trademark or a pending application, it may confuse consumers, leading to an objection. This typically falls under Section 11 of the Indian Trademark Act, 1999.
Lack of Distinctiveness: A trademark must be unique and capable of differentiating the goods or services from others in the market. If the examiner finds the trademark too descriptive, generic, or lacking in uniqueness, an objection may arise under Section 9 of the Act.
Deceptive or Misleading Marks: If a trademark misleads the public regarding the nature, quality, or geographical origin of goods or services, it may be objected to.
Incorrect Classification: Filing a trademark in the wrong class (based on the Nice Classification) can lead to an objection. There are 45 classes, and correct classification is crucial for proper protection.
Prohibited or Offensive Marks: Trademarks that include scandalous or offensive language, symbols, or emblems that are restricted under the Emblems and Names Act, 1950, can be objected to.
How Corporate Shastra Helps Address Trademark Objections
At Corporate Shastra, we guide businesses through the response process, ensuring that objections are dealt with in a professional and timely manner. Our step-by-step process includes:
Analyzing the Objection: We start by thoroughly examining the Examination Report issued by the trademark office. Understanding the grounds for objection is the first step toward building a strong response.
Drafting a Reply: Our team of experts drafts a comprehensive response to address each issue raised by the examiner. This includes providing explanations, legal arguments, and any necessary modifications or clarifications to the application.
If the objection is based on lack of distinctiveness, we demonstrate how the trademark is capable of distinguishing the goods/services in question.
In cases of similarity with existing marks, we highlight the differences between the applied trademark and the existing ones, emphasizing how there will be no consumer confusion.
Submission of Evidence: For certain objections, evidence of prior use or proof of the mark's uniqueness may be required. We assist in gathering and submitting documents such as invoices, sales data, marketing materials, and other proof of the mark's distinctiveness and commercial use.
Trademark Hearing Support: If required, we represent our clients in hearings before the trademark registrar. This is an opportunity to present oral arguments and respond to any additional concerns raised by the examiner.
Regular Follow-Up: After submitting the response, we keep track of the application status, ensuring that the trademark moves forward in the registration process. Once accepted, the mark is published in the Trademark Journal, allowing for potential opposition before final registration.
Documents Required For Trademark Objection
1. Trademark Examination Report
A copy of the Examination Report issued by the Trademark Registrar, which outlines the reasons for the objection. This report serves as the basis for drafting the response and addressing the specific issues raised.
2. Reply to Examination Report
A formal response to the objections raised. This document explains why the trademark should be accepted for registration, addressing concerns such as distinctiveness, similarity with existing marks, or classification issues.
It is important to present legal arguments backed by evidence, especially in cases involving objections related to Section 9 (distinctiveness) or Section 11 (similarity with existing marks) of the Indian Trademark Act.
3. Affidavit of Use (if applicable)
If the trademark has been in use prior to the application, an affidavit of use may be submitted. This affidavit declares the date from which the trademark has been used and provides evidence of continuous use. The affidavit should include:
The date of first use of the trademark.
A statement confirming that the trademark is currently in use for the goods or services mentioned in the application.
4. Evidence of Use
To support the affidavit, it is essential to submit proof of use of the trademark. Examples of evidence include:
Invoices: Showing sales under the trademark.
Advertising materials: Brochures, leaflets, online advertisements, or any promotional material using the trademark.
Product packaging: Images or samples of product packaging that display the trademark.
Website screenshots: Showing the trademark being used on the business's website or e-commerce platforms.
Social media posts: Featuring the use of the trademark in marketing or brand-building activities.
5. Power of Attorney (Form TM-48)
If the response is being filed by a trademark agent or attorney on behalf of the applicant, a Power of Attorney (Form TM-48) must be submitted. This document authorizes the agent to act on the applicant's behalf during the objection proceedings.
6. Supporting Legal Precedents or Case Law (if applicable)
In certain cases, it is useful to refer to legal precedents or judgments from previous trademark cases to strengthen the argument. These precedents may demonstrate how similar objections have been overcome in the past, offering support to the applicant’s case.
7. Additional Documents for Specific Cases
For Foreign Applicants: If the trademark objection involves a foreign applicant, additional documents such as a certified translation of foreign documents, business registration certificates from the applicant's home country, and prior use documents in their local market may be needed.
Proof of International Registration (if applicable): If the trademark is registered in other jurisdictions, proof of international registration can be submitted to demonstrate the brand’s global presence and strengthen the case for uniqueness.
8. Trademark Modification (if applicable)
If the objection is related to the design or specific wording of the trademark, the applicant may choose to submit a modified version of the trademark to resolve the issue. In such cases, the new trademark design or wordmark can be included as part of the response.
9. Translation (if applicable)
If the trademark or any accompanying documents are in a language other than English or Hindi, certified translations should be provided to the trademark office.
10. Consent Letters (if applicable)
If the objection involves similarity to an existing trademark, it may be beneficial to submit a consent letter from the owner of the existing trademark. This letter would indicate that the owner of the earlier mark does not object to the registration of the new mark, thus addressing the concern of potential consumer confusion.
Why Choose Corporate Shastra for Trademark Objection Handling?
Expert Guidance: With our deep understanding of trademark laws, we provide expert legal advice to ensure a strong and effective response.
Tailored Solutions: We customize our approach based on the specific nature of the objection and the business needs of our clients.
Timely Action: Responding to objections within the stipulated 30-day period is crucial, and we ensure that deadlines are met.
Comprehensive Trademark Services: From initial searches and filing to addressing objections and handling oppositions, Corporate Shastra offers end-to-end trademark solutions.
How to Avoid Trademark Objections
While trademark objections are common, some proactive steps can minimize the chances of facing them:
Conduct a Thorough Trademark Search: Before applying, ensure that the trademark is not similar to any existing registered or pending marks.
Ensure Distinctiveness: Choose a mark that is unique, distinctive, and not merely descriptive of the goods or services.
Classify Correctly: Make sure that the application is filed under the correct class based on the goods or services provided.
Avoid Prohibited Symbols: Ensure that the trademark does not include any symbols, emblems, or terms that are prohibited by law.
Conclusion
Trademark objections can be daunting, but with the right expertise and guidance from Corporate Shastra, they can be effectively addressed. Our team is committed to protecting your brand and ensuring a smooth trademark registration process. Whether you’re a startup or an established enterprise, we provide the support you need to safeguard your intellectual property and build a strong brand identity.
Trademark Objection FAQ's
What is a trademark?
In India, a trademark can be a unique sign, image, or name that signifies who created a product or provided a service. It stands as a unique identifier for a business, showcasing its brand and quality. Registering a trademark grants exclusive rights to use it, preventing unauthorized usage by others.