What Should You Do If You Receive a Trademark Objection Notice in India?

A trademark is an essential aspect of a business entity. Imagine you are going to start a new business, or you have already started a business. The obvious and most important thing is having a unique name or logo, or symbol that differentiates your goods or services from those of others – this is your TRADEMARK. Now your venture is recognized by the customers with the help of your unique logo. For example, Apple is known for its symbol of a half apple. If you want to protect your trademarks, you need to register them. Registration provides you with some exclusive rights to use your trademark and prevents your competitors from using it. However, the process is not always easy. When you apply for a trademark registration in India, the Trademark Office checks your application and sometimes raises some objections.

In this article, we’ll explain things that you should do to respond effectively in case you get any objections to your trademark under Sections 9 and 11 of the Trademark Act, 1999.

WHAT IS A TRADEMARK?

A trademark is nothing but any mark that is capable of distinguishing your goods or services from the goods or services of others or your competitors. These marks include any logo, symbol, name, etc. In India, it is governed by the Trademark Act, 1999.

WHAT IS A TRADEMARK OBJECTION?

An objection doesn’t mean rejection. It is like when you file for registration of a trademark in India. It undergoes an examination process, and if the officer finds any issues, then you may get some objections in an Examination Report by the Trademark Registry office. An objection refers to a doubt or an issue with your application, and they are asking you to clarify. An examiner or a registrar raises objections under Section 9 or 11 of the Trademarks Act.

What can be the reasons for Trademark Objections?

Primary reasons for trademark objections can be descriptive, non-distinctive, generic, or in conflict with any already registered trademarks.

Objection under Section 9, i.e., Absolute Grounds for Refusal –

Section 9 of the Trademark Act, 1999 lists reasons such as the mark is too descriptive or it is non-distinctive, and the office refuses your application without focusing on what others are doing.

Some reasons under this section –

1. Non-distinctive or common – In case your trademark is ordinary and common, due to which customers cannot differentiate between your goods or services and those of others, then it cannot be registered.

2. Descriptive – If the trademark is describing what you sell, such as type, quality, quantity, purpose, value, origin, then it cannot be registered. For example, you have a coffee shop called “Best Coffee”. So, it cannot get registered as a trademark because it is descriptive.

3. Customary in current language or established practice – If your trademark is any mark or indication that is common in the market, then it cannot be registered.

4. Misleading or confusing – If a trademark is confusing to people or misleading, then it cannot be registered.

5. Hurt Religious feelings – If a trademark is any mark that may hurt the religious beliefs of people.

6. Shape adds value – You cannot register a shape as a trademark in case it is making the product valuable, and the shape is needed for the function of the product.

Exception – There is an exception to the above three reasons that if an applicant has proved that people have associated their trademark with their business and it has built a reputation among customers, and it is well-known, then it might be allowed to register.

SECTION 11 – Relative Grounds for Refusal –

This section deals with relative grounds for refusal, which means there is some similarity between the proposed and existing trademarks. Such as –

1. Identical or Similar Name, products or services – If a trademark looks the same or similar to another and it is for the same goods or services, then it cannot get registered.

2. Well-known marks – In case of a well-known mark, any trademark, even if it is for different products or services, cannot get registered if it would unfairly use their fame.

3. Passing off – If a trademark is similar to an unregistered trademark that is already in use and the law protects them, then it cannot be registered if it leads to confusion among customers.

DIFFERENCE BETWEEN OBJECTION AND OPPOSITION –

OBJECTION refers to an issue raised by the trademark office itself after checking and examining your application. It can be under Section 9 or 11. Whereas,
Opposition, as the word suggests, comes from a third party who thinks your trademark is too similar to another trademark under Section 11 only.

STEP BY STEP GUIDE on WHAT TO DO WHEN YOU GET AN OBJECTION NOTICE –

1. Review Examination Report Carefully – The first step upon receiving a notice of objection is to carefully review and read the examination report. The aim of reviewing is to identify the specific grounds that are mentioned in the document for objection, whether they are under section 9 or 11 of the Trademark Act, 1999. The nature of the objection is necessary to understand for an effective response.

2. Collect evidence in favor of your Trademark – Don’t argue solely on legal points; you may lose the registration. Instead, gather evidence that shows the uniqueness of your trademark and its use by your business, because in trademark law, evidence matters. Evidence helps in establishing that your mark has acquired distinctiveness and is recognized by consumers. The list of evidence may include:

   • Invoices

   • Bills

   • Screenshots of the website or social media account of your business

   • Customer reviews

   • Email orders

   • Advertisements

   • Business cards or

   • Anything that shows recognition of your business by the trademark among customers.

3. Draft a Comprehensive Reply – The main part is to reply to the objection raised. Your reply should be drafted in a well-structured manner and address each issue raised in the examination report. The reply should be clear, consistent, and supported by law and facts. The structure of the reply includes:

   • Introduction – A brief introduction of the applicant and trademark.

   • Point-wise rebuttal – Answer each of the issues raised in the notice separately and point wise.

   • Proof – Attach evidence such as invoices, screenshots, etc., in the form of an annexure.

   • Prayer – Request for the acceptance of the mark as a trademark.

   • Legal Arguments – Mention references to different provisions mentioned in the Trademark Act and case laws to support your arguments.

4. File reply within the Deadline – You must file your reply within the deadline, i.e., 30 days from the date of the objection notice. In case of failure to respond timely, your trademark will be treated as abandoned. Furthermore, you may request an extension of up to 30 days, but this is subject to approval by the Trademark Office.

5. Wait further – If your evidence and arguments lead to convincing the registrar, then it will get published in the journal. If the examiner remains unconvinced, you may receive further objections or a refusal.

In Conclusion, an effective response to objections is a crucial and important aspect for the protection of your brand. Reply clearly and concisely, attach supporting evidence, and always respond timely manner. Following these steps while responding to a trademark objection may increase your chances of getting registration of the trademark.