One of the integral and most exercised Intellectual Property Protection processes in business remains Trademark Registration. Plenty of business houses deal in the same category of products in the market. To keep the competition amongst these enterprises legit and fair, and to ensure that the products of different companies get distinguished minus any confusion, Trademark Registration is done for goods and services.
To commence and carry on Trademark Registration, at first, the applicant has to submit a plea to the relevant Trademark Registrar following a standard format. Based on this application, the Registrar issues an Examination Report. Consequently, the report might either allow advertisement of the trademark application or uphold certain objections regarding the mark on predefined grounds.
In case of an unfavourable Examination Report outcome, the applicant gets another opportunity to submit a written request citing enough facts, evidence, and reasons supporting the plea to grant the Trademark Registration. After submitting the same, if the Examiner finds the applications to be adequate, authentic, convincing, and justifying enough to respond to the points raised by the Examiner while objecting, the application would earn its pass and get published in the Trademark Journal before it gets registered.
Examination Report for a Trademark Registration application gets generated after applying by and trademark applicant. After the submission, the application gets scrutinised and evaluated on several parameters by the Trademark Officer. Based on the analysis, the officer issues an Examination Report that gets communicated to the Trademark applicant or an authorised person. However, these reports remain also available on the Trademark Registration office website. If the report displays a verdict against the application, the applicant or the authorised person can send a rebuttal explaining every point raised by the officer in objection. If the officer finds the reply of the applicant satisfactory, the Trademark Registration gets done and makes its way to the pages of the trademark journal.
Receiving an Examination Report objecting to the Trademark application is not the end of the road. The applicant can submit a reply to this objection report either in person or through an agent authorised to handle such tasks for an enterprise. The reply should get submitted as “Reply to Examination Report.” For submission of the reply, the applicants can use the official website of the Trademark Registration department or can send the reply via post or in person. If the applicant has any documents related to Affidavit and such, those must remain attached to the main letter of reply.
If an application for trademark registration receives an objection report from the trademark officer on the grounds of not meeting the formalities adequately, the necessary documents must be submitted along with the reply to the report to the trademark office. For example, if a portrait of a person is getting used as the Trademark, the applicant might either have to submit a written consent of the person whose image is getting used stating no objections or have to attach supporting documents with the reply stating that the image of the person used does not correspond to any individual and is a fictitious or general figure.
If the objection has arisen due to the incorrect inclusion of the goods and services while applying for the trademark registration, the applicant may submit a reply to the examination report requesting to correct the state or class of the goods and services involved according to the benchmarks set and published by the Registrar.
Also, if some of the goods and services involved in a Trademark Registration application fall beyond the right boundaries of classes and states, the applicant has the liberty to plea for amendment or deletion of the goods and services that are a misfit for a certain class or state as mentioned by the Registrar. However, the classification is correct; the applicant can also state that the goods and services included therein belong to the class as ascribed by the Registrar.
No matter what the reply is, discussing the issue with a professional is a must in this case. Seek legal advice to know the right classification of the goods and services before framing the reply.
The primary reason for applying for a trademark remains to offer distinctiveness to a certain good or service. If the Examination Report negates the existence of such distinctiveness in the Trademark to lend the good and services the desired level of distinguished identity, the applicant can submit a reply stating the features and details of the Trademark that is capable of lending it the required distinctiveness. Or else, the applicant can also claim that the Trademark has already gained enough distinction is the market through its extensive use on the goods and services. However, for the later variety of replies, the applicant has to submit documents of Affidavit along with supporting evidence to establish the authenticity of the claim.
The core reason for Trademark remains to keep the same products made by different companies distinguished. Therefore, if a trademark that an applicant has applied for matches or resembles another trademark, which already exists in the market, the examination report raises an objection for passing the one for which the application has been submitted.
However, if the examination officer has cited the points of conflict between the two identical or similar trademarks, the reply to the objection must entail evidence and supporting documents validating the fact that the proposed Trademark has distinctive features that make it separate from the apparently similar one. Also, the applicant can procure the no objection letter of the entrepreneur whose Trademark has been marked as a conflicting one.
Here are some of the top reasons for trademark objection
In case the trademark application is not made on the proper form, the Trademark Examiner objects.
If the proper form is not used by the applicant while applying for Trademark Registration, the report of objection would be on its way.
The said report would not only mention the incorrect form used for the application but also suggest the right variety of forms that should be used for applying for trademark registration. Also, the form number for registering the request for correction would also remain mentioned in the report.
Corrective Action: To rectify this error, the applicant must fill the TM-16 form and apply for an amendment to get the trademark application passed.
If the trademark applicant has submitted the application depicting the names incorrectly, the Examiner will send the examination report, objecting to the sanction of the Trademark. The Examiner would also make a clear mention of the misappropriation done by the applicant and offer the right solution to it.
Corrective Action: To correct the trademark application containing incorrect or inadequate applicant’s name, the applicant must file a correction request by filling the TM-16 form and submitting the same to the relevant authorities.
If a trademark attorney or a trademark agent is applying for the trademark registration, the registration form must get accompanied by a duly stamped Form TM-48. If the form is missing, the Examiner will object while producing the examination report, mentioning the due course of Action to get over with the objection.
Corrective Action: To overcome such an issue, the applicant must fill the TM-16 form for requesting a correction.
If the right address of the office or business place of the applicant is not mentioned in the application or the service area in India is missing, the Examiner has every right to raise objection for the trademark registration.
Corrective Action: The objection arising out of inadequate or no mention of address can be handled by filing a request for application amendment through Form TM-16.
If the goods and services for which the trademark application has been submitted have not been described adequately by the applicant, the Examiner can object. Also, if plenty of goods and services belong to a single class, the objections can be raised as well.
Corrective Action: The trademark application can be corrected by filing a request form TM-16 by the applicant.
If the Trademark requested by the applicant matches with an existing Trademark, the applicant’s request might face an objection from the Examiner. The Examination Report would clearly state that the goods and services of the applicant match with goods and services of the other business with which the applicant has a conflicting Trademark issue.
Corrective Action: To solve this problem, the applicant should submit a reply to the trademark examination report, clearly stating that the Trademark claimed to be conflicting with an existing one is different indeed. The same claim must remain well-supported with enough evidence and documents.
If the Trademark of an applicant for any set of goods and services fail to show enough distinctiveness, separating the goods and services of the applicant from the rest of the market’s goods and services become challenging. Hence, the application stands every chance of rejection.
Corrective Action: To overcome an objection under absolute grounds for refusal of trademarks, the applicant has to cite enough evidence supporting the fact that the Trademark has acquired enough distinctiveness based on its extensive use.
The Examiner can object if the requested Trademark holds enough potential to trick the public mind with its appearance, design, quality, or specifications. If the Examiner finds the Trademark to be deceptive, the same does not get a straight approval for sure.
Corrective Action: An objection such as this can be dealt with if the applicant files Form TM-16 to exclude the elements disturbing the authenticity of the Trademark, as mentioned by the Examiner in the examination report.
