What Do I Do If My Trademark Application Gets Objected?

Registering your Trademark is a vital step to ensure the protection of your business name, logo, and symbols etc. When you file a trademark application, even after a thorough trademark search, it may be objected to under Section 9 or 11 of the Trademarks Act, 1999, by the Registrar after completing the examination in the examination report. These objections can be a significant obstacle for applicants. These objections are common in the registration process, and you should not panic because you have an opportunity to clarify by filing a comprehensive reply against the objection. This article will help you navigate the process thoroughly with essential steps when your trademark application gets objected to.

What is a trademark objection?

First of all, objection is not rejection. When you apply to register your mark—that is, your brand name, logo, or symbol—the trademark registry office rigorously checks your application to ensure that it fulfils all the legal requirements. If, in case, they find any issue with the application, such as similarity with existing marks or non-distinctiveness, descriptiveness, or something else, then you will get an objection under Section 9 or 11 through an examination report. Now, you need to file a comprehensive reply as required and give clarifications to the objection raised.

What are the reasons for Trademark Objections?

There are several reasons for a Trademark objection under Section 9 or 11 of the Act. Some of these are as follows:

1. Lack of Distinctiveness – According to Section 9, if your mark is generic, descriptive, or not capable of distinguishing your goods or services from those of others.

2. Identical or similar to existing marks – According to Section 11, if your trademark and goods or services provided are identical or similar to an earlier trademark, and there is a likelihood of confusion among consumers.

3. Deceptive or offensive marks – In case your trademark may deceive the public or contains any matter which may be offensive, such as hurting religious sentiments, obscene matter, etc.

4. Shape – If the shape of goods is essential for the goods to make them compatible, such as the shape resulting from the nature of the goods themselves, or adds substantial value to them.

5. Procedural issues – If there are errors in the filed application form, such as incorrect name, class of goods or services, or incomplete documents.

Respond to Objection – Step by Step Guide

1. Analyse and review the examination report – The first step is to read the examination report carefully to understand the grounds of objection. Ignoring this step may result in improper or incorrect reply filing.

2. Draft a comprehensive reply – When you have fully understood the grounds of objection mentioned in the report, move on to the next step, that is drafting an objection reply. To register your trademark without any further delay, you need to draft a well-researched, detailed reply. Separately address each objection in case there is more than one objection raised. Show distinctiveness or non-similarity of your trademark and use relevant case laws to support your arguments based on the facts and issues. Provide correct and authentic information related to your mark.

3. Collect and submit supporting documents as evidence – Arguments based on legal points are not enough; use evidence that shows you are using the trademark and proves the distinctiveness of the trademark. Evidence may include invoices, advertisements, screenshots, or any other relevant documents. If you are responding through an attorney, ensure the Power of Attorney is attached if not already submitted.

4. Deadline – Filing your reply within the specified period is mandatory. The period for the submission of the reply is 1 month, i.e., 30 days. You may file the reply through the IP India Portal or by email as provided in the report.

5. Hearing – If you think that a hearing is needed to prove your points, you may also request a hearing within the same period instead of submitting a reply. But it should be noted that if the registrar finds some issue with your objection reply, you may be called for a hearing to present your arguments.

What Happens After You Respond?

There are two possibilities:

First, if the registrar is satisfied with the response, your application will be published in the Trademarks Journal.

Second, if your reply is not satisfactory for the registrar, then in that case, you may be called upon for a hearing to present your arguments. After the hearing, if your arguments are considered valid, your application will move to the next stage, and if not, you will get a refusal order for rejection.

Tips for Strong Response –

Conducting a thorough trademark search report – Before applying to register a trademark, search and prepare a report so that you become aware of potential conflicts, and it also helps to reduce the risk of objections.

Professional Advice – Contact an IP attorney and consult them for professional advice for a smoother process. Don’t hesitate to consult if you are not sure how to respond to the objection raised.
Correct Documentation – Before submission of the objection reply, double-check all forms, supporting arguments, and arguments.

In Conclusion, Trademark objection is a normal part of the registration process, and there is no need to worry about them. Use the opportunity to present your arguments and evidence in Favour of your trademark. Follow the steps mentioned, and in case you feel stuck, consult with an IP professional. Always be vigilant about deadlines and other procedures. Protection of your brand through the registration of a trademark is essential for business reputation and goodwill in the market.