A trademark objection is a formal communication from the Trademark Examiner at the Indian Trademark Registry, stating that your trademark application has certain issues that prevent its immediate registration. It’s an initial hurdle in the trademark registration process and does not mean your application is rejected outright. Instead, it’s an opportunity for you to clarify, justify, or amend your application to address the examiner’s concerns.
When your trademark application status changes to “Objected” on the official IP India website, it means an Examination Report has been issued. This report details the reasons for the objection.
Common Grounds for Trademark Objection in India
Trademark objections are primarily raised under Section 9 (Absolute Grounds for Refusal) and Section 11 (Relative Grounds for Refusal) of the Trademarks Act, 1999, among others.
1. Absolute Grounds for Refusal (Section 9): These objections arise when the trademark itself has inherent flaws or lacks distinctiveness.
- Lack of Distinctive Character (Section 9(1)(a)): The trademark is not unique enough to distinguish your goods or services from others. It might be:
- Generic: Common names for products/services (e.g., “Phone” for a mobile phone).
- Descriptive: Directly describes the kind, quality, quantity, purpose, value, geographical origin, or other characteristics of the goods or services (e.g., “Sweet” for candy, “Fast Food” for a restaurant).
- Commonly used: Terms or signs that have become customary in the current language or in the established practices of the trade.
- Deceptive or Misleading (Section 9(2)(a)): The mark is likely to deceive or cause confusion among the public (e.g., “Organic Garden” for non-organic products).
- Hurts Religious Sentiments (Section 9(2)(b)): Contains matter likely to hurt the religious susceptibilities of any class or section of Indian citizens.
- Obscene or Scandalous (Section 9(2)(c)): Comprises or contains scandalous or obscene matter.
- Prohibited by Law (Section 9(2)(d)): Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (e.g., national symbols, names of international organizations).
- Shape of Goods: The mark consists exclusively of the shape that results from the nature of the goods themselves, or is necessary to obtain a technical result, or gives substantial value to the goods (Section 9(3)).
2. Relative Grounds for Refusal (Section 11): These objections arise when your trademark conflicts with existing trademarks or prior rights.
Similarity to Existing Trademarks (Section 11(1))
- Your mark is identical or deceptively similar to an already registered trademark for similar goods/services.
- Your mark is identical or deceptively similar to a prior filed but unregistered mark, where such use could cause confusion.
- The examiner will cite similar marks found during their search.
Similarity to a Well-Known Trademark (Section 11(2))
Your mark is similar to a “well-known trademark” in India, and its use would take unfair advantage of, or be detrimental to, the distinctive character or repute of the well-known mark.
Protected by Copyright (Section 11(3)(b))
The use of your mark is liable to be prevented by the law of copyright.
Prior Use (Passing Off)
The mark is liable to be prevented by the common law of passing off protecting an unregistered trademark used in the course of trade (Section 11(3)(a)).
3. Other Common Procedural/Formal Objections:
- Incorrect Applicant Name/Address: Discrepancies in the applicant’s details.
- Vague Specification of Goods/Services: The list of goods or services is too broad or unclear, requiring more specific details.
- Failure to File Form TM-48 (Power of Attorney): If the application is filed by an agent/attorney without a proper Power of Attorney.
- Improper Classification: Goods/services are listed in the wrong class(es).
How to Respond to a Trademark Objection (Examination Report)
It’s crucial to respond to a trademark objection promptly and effectively.
Analyze the Examination Report Carefully
- Understand the specific sections of the Act under which the objection(s) have been raised.
- Identify the exact reasons for the objection. If prior marks are cited, analyze them thoroughly (their mark, class, goods/services, status).
Draft a Comprehensive Reply
- Address Each Objection: Respond to each objection raised in the report point-by-point.
- Legal Arguments: Provide legal justifications, citing relevant sections of the Trademarks Act, 1999, and if possible, relevant case laws or precedents that support your arguments.
- Claim Distinctiveness (if Section 9):
- If the mark is descriptive, argue that it has acquired distinctiveness through extensive use (proof of sales, advertising, duration of use, market recognition).
- Explain how your mark, despite seeming descriptive, has a unique element or combination that makes it distinctive.
- Argue that the mark is suggestive rather than descriptive.
- Distinguish from Cited Marks (if Section 11):
- Highlight the differences between your mark and the cited prior marks in terms of visual appearance, phonetic sound, and conceptual meaning.
- Argue that there is no “likelihood of confusion” among the public.
- If the cited mark is not in use or has lapsed, you might mention that (though you cannot get it removed through an objection reply).
- Provide Evidence: Support your claims with documentary evidence, such as:
- User Affidavit: An affidavit affirming the date of first use and consistent use of the trademark.
- Proof of Use: Invoices, sales figures, advertisements (print, digital, social media), marketing materials, website screenshots, brochures, business cards, letterheads, news articles, media coverage.
- Government Documents: MSME or Startup India certificates (if claiming lower fees or specific benefits).
- Consent Letters/NOCs: If you have consent from the owner of a similar cited mark.
- Justification for Classification: Explain why the chosen classes are appropriate.
- Formalities Correction: If there are procedural objections, provide the corrected information or missing documents.
- Prayer: Conclude with a clear request for the acceptance of your trademark for advertisement in the Trademark Journal.
File the Reply Online
- The reply is typically filed online through the Intellectual Property India e-filing portal.
- The reply document (often a PDF) is submitted as an attachment to an official form (usually a general communication form, TM-M for amendments, or simply responding through the online system).
Timeline for Reply
- You must file the reply within 30 days from the date of receipt of the examination report.
- Crucial: Failure to submit the reply within this timeframe will result in your trademark application being marked as “Abandoned”, meaning you lose all progress and would need to file a fresh application.
- While technically an extension of time can be sought by filing Form TM-M with additional fees and a valid reason, it’s always best to respond within the initial 30 days.
Hearing (if required)
- If the examiner is not satisfied with your written reply, or if they require further clarification, they may schedule a hearing.
- You or your authorized trademark agent/attorney must attend the hearing and present arguments and evidence in person.
- The examiner makes a decision after the hearing.
Fees for Trademark Objection Reply
Government Fee
There is no separate government fee for filing the initial written reply to an examination report (Form TM-O, if specifically used, but often it’s an online response to the examination report itself).
Professional Fee
If you engage a trademark agent or attorney, they will charge a professional fee for drafting and filing the reply, and for attending any hearings. This fee can vary based on the complexity of the objections and the firm.
Affidavit Cost
If you submit an affidavit of use, there might be a nominal stamp paper cost and notary charges.
What Happens After Filing the Reply
Acceptance & Advertisement
If the examiner is satisfied with your reply, the trademark will be accepted and advertised in the Trademark Journal. This opens a 4-month window for third parties to file an opposition.
Further Objections/Hearing
The examiner might raise further objections or schedule a hearing if the reply isn’t fully convincing.
Refusal
If the examiner remains unsatisfied after the reply and/or hearing, the application may be finally refused. You would then have the option to file an appeal with the Intellectual Property Appellate Board (IPAB) or a higher court (though IPAB’s existence and functions are currently subject to changes in appellate tribunals).
It is highly recommended to seek our trademark experts when you receive a trademark objection. They have the legal expertise to analyze the objections, draft a strong and legally sound response, gather appropriate evidence, and represent you effectively during hearings, significantly increasing your chances of successful trademark registration.