Written by : AK Agrawal

An experiences Chartered Accountant and Techno-Functional consultant working in industry for over 10 years dealing with multinational corporate clients. He is loves reading latest trend of technology trend.

How To Respond To Trademark Objections?

AK Agrawal
AK Agrawal, Chartered Accountant

Jun 9, 2021 03:29

Would you like it when someone steals your identity and makes a big fat amount using it? Just like your identity, a trademark is the identity of a given brand. It acts as a major distinguishable aspect of a brand. If you are starting a new business, then the central thing to bear in mind is that there are high chances that there are already quite a few companies or brands that exist in your domain as competitors. Obtaining a trademark is almost indispensable in the present era of the 21st century. There has been over 90 percent increase in trademark registrations in India in the past few years, as per the IP India Report. Due to the competitive market and some other factors, there are chances that you may receive an objection to your trademark application. If you get a trademark objection, you should not stress out. Our team has highlighted in this article the different ways you can respond to a trademark objection.

What is a Trademark?

As discussed earlier, a trademark of a brand can be anything – a symbol, an image, a word sound, or a name. It is the eccentricity that envisages a business's unique positioning with the consumers. Trademarks are considered assets that need to be registered to shield them. When it comes to protecting your brand, this business asset is on the essential list that any other form of business can take. In our country, trademarks are categorized as intellectual property. They have a legal status that protects a brand from infringement.

How to Register a Trademark?

Trademark registration in India is a knotty task. You need to wait at least two years for it to be legally registered. Trademark registration is set within the confinement of Section 18 of the Act. After you file an application for the registration, you will be allocated a number to check the status of the process. Your application passes through several procedures, starting with a Vienna codification and formality check that confirms all the essential documents are submitted. Then, there will be a close inspection to check infringements of provisions, If things work out fine, then a report will be issued, and the mark will be published in the Trademark Journal. After it is published, there is a 3 month period and an extended one-month wait, and during this time, anyone, be it the public or third party, can object to the registration of the trademark. If you pass without any objection, then the trademark will be issued. You will be facilitated with a registration certificate that also gives you ten years of protection that can be renewed again.

What is a Trademark Objection?

An objection against the trademark is filed during the trial period before the issuing of the mark. It can be filled by the Examiner or by a third party and is validated by Section(s) 9 (Absolute Grounds of Refusal or Section 11 (Relative Grounds of Refusal). The Examiner refusals are usually made if the application consists of wrong or incomplete information or in case of similarity with other trademarks. Third-party refusals are formulated on behalf of the public interest. Third-parties can object after it is published in the official gazette or the claimant uses the mark before registration. If the applicant does not abide by the provision and uses it before approval, then the status of the application will be changed to "Adv Before Acceptance."

The person who objects to the registration of the trademark should include the grounds on which they reject it. If you got rejected, then the status will be changed to "opposed." As per the Trademarks Act, if you get opposed, then the applicant will get a due chance to defend his application as per the process.

How to Deal With Trademark Objection

If there is any objection filed by the Examiner or by a third party, the applicant will be facilitated with a notice explaining objection grounds. To respond to the objection,

  1. You can file a counter-statement opposing the filed objection.
  2. If you are planning to file one, then this must be done within 2 months of him receiving the objection notice.
  3. If you have not filed the counter-statement before 2 months, then your registration application will be considered Abandoned.

After filing the counter, you will be called for a hearing. This hearing will determine the fate of your registration, and if it is in your favour, then the application will be approved, and you can register your trademark successfully. If not, then according to the claim of the opponent, your trademark will be removed from the official gazette, and the application will be rejected.

However, you can go for an appeal to the Intellectual Property Appellate Board (IPAB) to continue the case. While filing for the appeal, make sure that

  1. You apply it within 3 months of the rejection order passed by the Registrar.
  2. If not, then you will be obliged to state the reason for the delay, and a fine of Rs 2,500 will be issued. Moreover, your reason should be validated by the IPAB, and if not, you will not be posted for another hearing.
  3. Your appeal, application, and fees should abide by the rules set in TradeMarks Rules.
  4. The applicant should verify and confirm all the documents submitted for the appeal.
  5. The date on which the application is presented should be sanctioned by the Deputy Registrar.
  6. The Deputy Registrar cross-examine the application, and if there are any errors, he will notify it.
  7. You will be allotted 2 months to make corrections and resubmit the application again.
  8. If you haven't submitted it, then the application will be abandoned.
  9. If the application is accepted, you will receive a serial number, and the Deputy Registrar will fill your case.

The IPAB will hear the registered case on a location and a date that is decided based on the jurisdiction under which the case falls according to rule 2(m). The hearing includes the following,

  1. The IPAB decides the case on behalf of the submissions made by the applicant and the opposite party.
  2. If either of you were absent, then the IPAB can decide the merits based on it, give an ex parte order, or simply dismiss the case.

In this case, you will be given 30 days from the date of the ruling to file for a petition against the dismissal or ex parte ruling. If it is ruled again, then you can file an appeal in the high court against the IPAB order and subsequently to the Supreme court of India.

Streamline the Trademark Registration and Objection Dealing Process with Gotaxfile!

The authorization of a trademark is vital and requisitory when you are establishing a business. Gotaxfile aids you in the process and helps you with effective solutions that can avoid this exhaustive procedure. We give expert guidance that completely comprehends your business requirements and hasten up the trademark objection process in a cost-effective manner. If you face any complications related to Trademark registration or refusal, please contact us for assistance.

AK Agrawal
AK Agrawal, Chartered Accountant

Jun 9, 2021 03:29

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