WHAT IS TRADEMARK OBJECTION OR WHY IS TRADEMARK OBJECTED
The term/word “Objected” means or implies that the applied trademark application has been examined by a trademark examiner and a report generated and the reasons are generated in its report against the mark applied before its registrability.
Main reason is
- Incomplete/Incorrect information provided by the applicant in application form-TM-A
Information relating to the principal place, applicant name, class of goods/services, or other information in the trademark application is wrong then it comes under the scanner/scrutiny of objection.
- Same / Similar trademarks already exist
The above case comes in context when the trademark shows the incapability of marks to be modified or graphically presented the earlier trademarks already registered.
Once a trademark application is filed, the first step in its registration process would be examining the said trademark. Examination of a trademark means that the mark would be checked to see if it complies with the relevant provisions of the Trademarks Act and same is fit to be registered.
In the standard case, the two main provisions of the Trademarks Act which come into play at this stage are Sections 9 and 11 of the Trademark Act 1999, (called absolute- means independent, permanent, and relative- means partial or transient, dependent on circumstances, objections respectively). These Sections, broadly speaking, lay down that a trademark should either be inherently distinctive (and not like any earlier existing mark) or should have ‘acquired distinctiveness’ through its usage.
- Deceptive marks
- Lack Distinctiveness
- The existence of an Identical Trademark
- False Specifications of goods or services
- Offensive words as a part of or as a trademark
What is Section 9 and 11?
Section 9(1) in The Trademarks Act, 1999
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person.
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production
of the goods or rendering of the service or other characteristics of the goods or service.
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trademark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of
Section 9(2) in The Trademarks Act, 1999
(a) it is of such nature as to deceive the public or cause confusion.
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.
(c) it comprises or contains scandalous or obscene matter.
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).
Hence the Examiner would analyze the trademark in question (primarily considering the two sections) and generate a report mentioning the objections if any and list similar/identical third-party marks if any, during which the status would reflect as “Objected”
Once the online status reflects “Objected” the next step to be taken by the applicant is to obtain the examination report and respond to the same, elucidating how the objections are not tenable. Earlier, examination reports were sent by post either to the applicant’s or his agent’s address. But now with digitalization and automation, the procedure has become easier, and we can directly download examination reports from the website –
E-Register-Main Page: https://ipindiaonline.gov.in/eregister/eregister.aspx, from Trademark Official Web Site.
Most important, the time within which an examination report is to be responded to, is one month from the date of receipt of the said report and failure to do so, would, as per law, deem the application as ABANDONED.
