Overview

A trademark can be any verbal expression, symbol, design, or combination of these that is used to identify the goods and services. You need to have all the information of classification, before filing a Trademark Application, so that you can file the application of protection of the trademark in the correct class. You must know about Nice Classification to avoid trademark objection, it is an international classification, of goods and services is a system for the purposes of the trademarks registration. Nice classification has a total of 45 classes, in which class 1-34 specifies for goods and class 35-45 for services. The most important feature of a trademark is that it must be distinctive in nature and not deceptive in nature otherwise a trademark objection may be raised. The registration process of a trademark is not an easy task. Trademark application may be objected by the registry by citing numerous grounds.

Grounds for Trademark Objection

After filing of the Trademark Application, if it follows all the procedural requirements, then the officers will examine the Application and may issue an examination report by citing certain objections. The objection raised by the officials can be either under section 9 (Absolute ground) or under section 11 (Relative grounds) of the Trademarks Act, 1999.

Absolute Grounds of Refusal under Section 9

According to Section 9(1) of the Trademarks Act, 1999, a trademark objection may be made if:

• It is not able to differentiate the products and services of the applicant from others in the market.
• A trademark specifies the type, quality, place of origin, production time of goods or services.

According to Section 9(2) a trademark can’t be registered if:

A trademark is deceptive and creates confusion among consumers. Section 9(2) (a) primarily concerns about the deceptive nature of the trademark which eventually lead to trademark objection. A trademark may be deceptive if something about it, like the quality, nature or place of origin of the goods or services, is contained in the trademark in one or other way.

A trademark must not contain any kind of marks that are likely hurt the religious or regional sentiments citizens of India. For example, a trademark cannot be permitted in the name of religious heads or deities on any products or services, it is advised to take help oftrademark objection services provided by many professionals.

A trademark that comprises or contains malicious or obscene content. Use of certain names is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. For example, names of national leaders, like Mahatma Gandhi, Pandit Nehru, or a logo which is identical to Indian Flag are prohibited.

According to Section 9 (3), a trademark objection may be made if:

The nature of the products determines their shape. The shape of goods that are necessary to get a technical result. Any shape that significantly increases the value of the products.

Relative grounds for Refusal under Section 11-

Section 11 of the Trademark Act describes many relative grounds for refusal of a trademark registration.  

A trademark objection can be made under section 11 due to its similarity with a pre-existing trade mark of goods and services. This provision is mainly to protect the already existing identical trademarks in the market. So, if the trademark is similar or identical to a prior existing mark in relation to similar goods or services and due to which there is a chance of deception as to origin of the goods or services, then the registration of said trademark shall be refused.

Section 11(2) States the Following Grounds for Trademark Objection –

If the proposed trademark is identical with or similar to a pre-existing earlier trade mark.

If the proposed trademark to be registered for goods or services which are not identical to those for which the existing trademark is registered in the name of a different company.

Trademark Objection under Section 11(3)-

A trademark cannot be used if it is prohibited by passing-off or copyright laws.

Section 12 is an exception to this which deals with honest and concurrent usage, i.e where both the trademarks have been honestly and concurrently being used by the respective trademark holders, then registration of trademark may not be refused.

Documents Required For Trademark Objection Reply in India

Following documents are required for reply to trademark objection:

• Examination report of trademark
• ID proof and address proof
• Affidavits
• Business cards and letterheads
• Invoices and bills
• Any other relevant documents issued by the government

How to File a Trademark Objection Reply in India?

After getting the examination report, you need to quickly submit a detailed written reply to the trademark objection. Application may be rejected in the absence of a reply to the trademark objection. You require to file a reply that must be thorough, justifiable, mentioning evidence, and facts. If reviewing officer is convinced by yourtrademark objection reply in India then the trademark will be published in any public journal. Any third party will be given four months to review and make any opposition.

Following aspects must be considered carefully while filing a reply to the trademark objection:

Analysis: It is important to thoroughly understand and assess the trademark objection with the help of trademark objection services providers in India. Any misunderstanding could lead to a vague response.

Drafting: You need to file a reply that must be adhered to the specified norms. It should address the objection effectively, mentioning applicable laws, rulings, and differences between the contested marks. Any supplementary evidence or documents may be included to reinforce thetrademark objection reply in India.

Affidavit: If the proposed trademark will be published on digital platforms, then a separate affidavit mentioning this must be attached with the reply.