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Once the examination gets over of the trademark, the examiner might issue an examination report and thus pass the application in the Trademark Journal. However, if the examiner finds any objection towards the trademark, the officer then reports the objection of the trademark, which the applicant needs to reply back in 30 days describing the reasons in favour of the applicant.
After considering the response from the applicant, if the objection is waived off, then the Registrar accepts the trademark application for registration, thus issue it for advertisement under Trademark Journal. If the examiner is not satisfied by the reply, then your application will be marked for hearing.
In examination report reply, you can also straight away opt for hearing, without filing a reply
In case the application lack the documents such as, MSME Certificate, Duly notarized power of attorney, duly notarized affidavit, user claims and other alike documents, or in case when some omissions are other clerical errors are made at the time of filing of application.
In some cases, if the good or service mentioned in the application does not come under that relevant class or state, the trademark applicant may have to file a request for deleting those items and make changes according to that.
Also, even if the goods or service falls under the same class, but the mark is not depicting those services, then also department raises objection.
In some cases, if the Registrar files a report regarding the lack of distinctiveness or distinguishness of the mark, then the applicant will have to submit the response explaining about the mark and why it is distinctive in nature and capable of being distinguish.
In some cases, if the Registrar finds identical or similar mark or even phonetically similar mark, with an existing trademark with an existing logo or trademark, then the examiner will send a report to the applicant citing as conflicting. About this, the applicant will have to submit the response explaining how the applicant’s trademark details, goods, and services, or its logo or word is different from that of an existing company, along with some supporting evidence.
In some cases when the Registrar finds that the applicant has applied an incorrect form for Trademark, then the Registrar will send a report regarding this and thus requesting the applicant to apply for TM – M.
In some cases, if the Registrar finds that the applicant has filed the application with an incorrect name, the Registrar will thus request the applicant to file an application with the correct firm name, correct applicant’s name, and submit this with the request form TM-M.
If the Registrar finds that the goods or services specified on the application is too vague and wide, then the Registrar files an objection report, requesting the applicant to specify the exact goods and services provided by them, by filing a request on form TM – M.
If the Registrar finds that some of the good or service provided by the business of the applicant is found to be deceptive, such as the nature of the business, quality of the goods, or any other objection, then the Registrar files an objection letter, to exclude those goods or services which the Registrar finds deceptive, by filing a request on form TM – M.
The process of Trademark Registration includes Trademark Objection. A trademark registrar could raise objections if he deems that the applicant’s documents are unfit under law or under procedure. Other reasons could be a similarity between the logos, or any offense towards any culture or religion, the similarity between the words with any existing company’s logo or words. In simple words, trademark objection is a stage wherein the trademark officers might have objections with the trademark of the company which is registering because of some lawful or procedural reasons.
We at Legal Sampark study and analyze the trademark objection report thoroughly and identify the issue which led to the objection.
Our experts then carefully draft a response to Trademark Objection. This draft will include evidence, claims, prayer and facts that will validate your response and nullify the objection.
If the response is accepted leading to the nullification of the trademark objection, then department proceeds further for registration in the Trademark Journal. If not, then another trademark hearing is scheduled and notified to the applicant.
When all the objections are nullified in trademark hearing, the mark is authorized for publication in the Trademark Journal. If not, then a Refusal Order is passed stating the reasons for refusal. The applicant does have a choice of appealing for a review petition within the first thirty days from the passing of the Refusal Order. It is mandatory to include the reasoning for the appeal of a review petition.
After that, the trademark is published in the journal, it is open for review and opposition for a period of four months. When no third party files for any opposition during this period, a registration certificate is issued and submitted to the applicant. If there is any opposition raised, then further registration proceedings take place as per rules and regulations stated and Registration certificate is granted.
When you file an application, then the department, if not satisfied, within a month’s time raise an objection, demanding the necessary information and documents from the applicant.
- Incomplete application
- Mentioned incorrect nature of Goods and Services
- Omission or due to clerical error
- Incomplete documents
- Wrongful user claim
- Under section 11(1) of the act
- Under section 9(1)(a) or 9(1)(b) of the act
This is the common form of objection, when the documents and the application is totally complete. Examination report is raised, only when the department is not satisfied with your Mark as per Section 9 and 11 of the act.
Also, in examination report, the department sometimes demand to file TM-M for correction or amendment in application.
Within One Month from the date of receipt of this Examination Report.
However, the department usually gives a grace period as well. Although filing of reply post one month, leads to show cause hearing.
The Government fee for replying to examination report is Nil.
Yes, only in case departments feels non-satisfied and demands to file TM-M, for which government fee is Rs. 900/-.
Also, in case there is any short falling of application fee, the department shall demand that as well.
Commonly, objection is raised under these two sections;
9 (1) the trade marks—
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;
11. Relative grounds for refusal of registration.—
(1) Save as provided in section 12, a trade mark shall not be registered if, because of—
a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
This may lead to your application to obtain status of being abandoned. After that, To obtain the mark, you need to file fresh application.