Trademark Objection In Delhi NCR
Trademark objection is a type of intellectual property protection which is used to protect any word or symbol used by a business to distinguish its goods or services from others similar goods or services. In order to register a trademark, a trademark application must be filed by the applicant with the relevant Trade Mark Registrar who is responsible for processing the application and issuing an Examination Report. Trademark Registry appoints the registrar who is responsible for examination of trademark examination. Trademark examination Report is used to advertise the trademark application before registration. Also, the trademark examiner can raise objection for the registration of the trademark. The trademark applicant can submit a written reply to the Trademark registrar, over the objection raised which contains all the reasons and facts and evidences in support as to why the mark should be registered in favor of the applicant. Any objection to the trademark application can be responded within a month i.e. 30 days.
Trademark offices can raise objections if the trademark application does not meet the norms of the trademark. Trademark objection could be done for similarity between logo or word, descriptive name or design, prohibited name or due to sentiments attached with any religion. The primary causes for trademark objections are vague specification of goods and services, existence of similar trademark; trademark lacks distinctive character, wrong details in trademark application form etc. The application would be allowed to publish in the trademark journal only if the reply by the applicant is sufficient and addresses all the concerns of the examination Report. The capital city of India, Delhi, is a vibrant city with rich historical background. It houses some of the very famous monuments like- the Red Fort, Rashtrapati Bhawan, Qutb Minar, Jama Masjid, and many more. It holds a political and administrative position since many centuries, till date. It is a fast developing city and so is the concept of Trademark. So it is important to learn about trademark and its related issues.
Following are the reasons for trademark objection in Delhi:-
Use of Incorrect Trademark Form Trademark examiner can raise objection over trademark application if the application is not made on form TM-1. The applicant can fill a request on form T-16 to overcome this objection.
Incorrect Trademark Applicant Name The trademark applicant name must be entered correctly in the trademark application form. In case of incorrect trademark applicant name, there are chances that the trademark examiner can raise objection over the application.
Failure to file trademark form TM-48 Trademark Objection requires that the applicant must attach Trademark Form TM-48 with the trademark application form. Failure to attach TM-48 form will lead to objection by the Trademark Examiner. In case if the application is objected by the examiner, the applicant is required to file a duly stamped power of attorney in favor of a particular agent.
Incorrect Address on Trademark Application In case if the applicant fails to specify his address for service in Delhi, he is required to fill a request on form TM-16 specifying his/her principal place of business in Delhi.
Vague Specification of Goods or Services Trademark examiner can raise objections over the trademark application if the specification of the goods is too vague and cannot generalize the product i.e. if the specification encompasses a large variety of goods and services.
Same or similar trademark exists Trademark examiner raises objections under Sec 11(1) of the Trade Marks Act, 1999 if he founds that the trademark applied is similar to trademarks that have been already registered or applied before the Registry of Trade Marks by some third party.
Trademark Lacks Distinctive character If the trademark fails to distinguish goods and service of one person from those of another person then it is liable to be objected by the trademark examiner.
Trademark is deceptive The applicant’s mark must not indicate the goods and services offered and should be distinct in itself. The applicant’s mark is liable to be objected by the trademark examiner if it has the potential of deception of the general public as to the origin of the goods and services.
Trademark Registrar is responsible for trademark objection. Generally, trademark objection is carried out by the trademark registrar who examines the trademark application and make search of earlier trademarks which are identical to the marks being examined. Based on the examination, the trademark registrar submits its finding which is compiled as Trademark Examination Report.
Trademark objection in Delhi could be done for the following reasons:
Objection Pertaining to Absolute Grounds
Section 9 of the Trademarks Act, 1999 provides for certain marks which are non register-able because of certain inherent problems in it. The absolute ground of objection is provided under Sec 9 where the interest of general public is protected instead of any specific third party. According to sec 9(1) of the Trademarks Act, 1999 a trademark can only be registered only if it is distinctive for the provided goods and services and must not be offensive, generic, deceptive or non distinctive. Thus, it is required that the mark should not be indicating the goods and must be distinct in itself. Also, the mark should not be common to the trade in which the mark would do business after registration. For example: A company selling apples cannot choose ‘Apple’ as the word mark because it is descriptive to the goods offered by the company. However, the company can use the word mark ‘Apple’ for any other product.
If trademark examiner raises objection over the trademark application in the Examination Report regarding the trademark being non-distinctive, the applicant is required to submit a reply to the Examination Report stating that the mark can be distinguished from the goods and services offered. In case if the applicant is claiming that the mark has acquired distinctiveness due to its extensive use related to the goods and services it stands for long time before the application was even made, he is required to produce an affidavit containing evidence of the extensive use of the applicant’s mark.
Objection Pertaining to Relative Grounds
Section 11 of the Trademarks Act, 1999 provides for relative grounds for refusal of the trademark by the trademark examiner. Generally, the trademark examiner raises objections under Sec 11 if he founds that the trademark applied is similar to trademarks that have been already registered or applied before the Registry of Trade Marks by some third party. The objections in this category is raised to protect the interest of an individual or a party holding a similar or identical trademark and also to safeguard the interest of general public from confusion or deception as to the origin of the goods or services.
Following processes needs to be followed for filing a trademark objection reply in Delhi:- Trademark Opposition Once the trademark is advertised in the trademark journal, any person can raise an opposition to the trademark within 4 months of the same. Counter Statement The trademark applicant has an option to reply to the trademark opposition within two months of the receiving of the notice of trademark opposition. Hearing The next step in trademark objection reply is that the registrar will call the applicant based on the trademark opposition and counter statement. Registration or Rejection The trademark application will only be selected if the registrar is satisfied with the trademark applicant evidence. In case if the applicant of trademark fails to provide sufficient documents and evidence regarding the trademark, the registrar has the right to reject the trademark application.
If trademark examiner raises objection over the trademark application in the Examination Report regarding the trademark being non-distinctive, the applicant is required to submit a reply to the Examination Report stating that the mark can be distinguished from the goods and services offered. In case if the applicant is claiming that the mark has acquired distinctiveness due to its extensive use related to the goods and services it stands for long time before the application was even made, he is required to produce an affidavit containing evidence of the extensive use of the applicant’s mark. Following are the minimum requirements for Trademark objection Reply in Delhi:- Trademark receipt A copy of trademark receipt containing the details of registered trademark is required. Power of Attorney If the application is filed by an agent on behalf of the trademark owner, the trademark owner is required to produce a duly signed power of attorney before the trademark office.
Documents requirement for Trademark Objection Removal
Trademark offices can raise objections if the trademark application does not meet the norms of the trademark. Trademark objection could be done for the similarity between logo or word, descriptive name or design, prohibited name, or due to sentiments attached with any religion. The primary causes for trademark objections are the vague specification of goods and services, the existence of a similar trademark; the trademark lacks distinctive character, wrong details in the trademark application form, etc. The following documents are required for trademark objection reply in Delhi:
The applicant is required to mail a coloured scanned copy of the examination report along with a printed copy of the reply to the trademark office. The applicant can submit the reply to the objection raised in the examination report through online portal of trademark registry.
If the application is filed by an agent on behalf of the trademark owner, the trademark owner is required to produce a duly signed power of attorney before the trademark office.
The applicant is required to submit other documentary proofs such as affidavit, permission from another trademark etc.
Advantages and Benefits of an appropriate Trademark Objection Reply in Delhi
Trademark objection is a type of intellectual property protection that is used to protect any word or symbol used by a business to distinguish its goods or services from other similar goods or services originating from a different business. The trademark examiner can raise objections to the registration of the trademark. The owner of the trademark is required to clear the doubts raised in the Examination Report through an objection which is to be filed within 30 days from the date of the issue of the Examination Report:-
If the objection reply has been filed with clear evidence and proper reply, the applicant has greater chances to receive trademark protection. Once the trademark is registered with the trademark office, the owner of the trademark will enjoy an exclusive right over the trademark for 10 years.
- Seeking Damages
The trademark owner can seek statutory damages from the court if he/she has successfully replied to the objection raised in the Examination Report. Statutory damages mean the court can award special damages to the trademark owner and the owner is not required to prove the actual damages. If not registered, the trademark owner has to prove the actual damages caused for getting an award of damages and profits.
- Exclusive Right
After the successful completion of the objection reply, the trademark owner enjoys an exclusive right over his trademark for a period of 10 years. The trademark owner has a right to initiate legal proceedings against any person for trademark infringement.
- Creation of Asset
Intellectual Property is an intangible asset. A successful reply to the objection raised in the Examination Report will create intellectual property and thus help the organization to sell or franchise or commercially contract the registered trademark. The registered trademark acts as an important asset for the company and contributes to the goodwill of the company.