Trademark(TM) is a visual symbol which may be a sign, design which identifies products or services from one another. TM may be located on a package or on voucher or a product list. It creates an image for the goods/services.
Registering a trademark confers exclusive rights upon the owner tom use it in relation to goods & services in respect of which it is registered. Registering of a trademark is made in a prescribed form along with prescribed fees of Rs. 4000.
After making an application for its registration, scrutinizing is done by the registrar/Examiner and status of application may be shown as ‘accepted & advertised’ or ‘objected’
Here we are discussing regarding the common objections raised by the Registrar/Examiner in the Examination Report. Two main sections under which objections may be raised are Section 9 & Section 11 of the Trademarks Act.
Section 9 (LACK OF DISTINCTIVENESS)
Objections under this section are made when the Registrar/Examiner considers the trade mark to be descriptive of goods/generic/laudatory/indicating quality or nature of goods. In other words, when your Mark is not a specific name, but it is the description of the work or the quality of your Product then objection may raise by the examiner in respect of the distinctiveness of your name.
In order to overcome the Section 9 objection, it is necessary to show that the trade mark is inherently distinctive. Or if the trade mark has acquired a distinctive character as a result of extensive use. For this purpose, it is necessary to submit a user affidavit along with cogent evidences to show that the trade mark has acquired distinctiveness.
Section 11(SIMILAR WITH REGISTERED TRADEMARKS)
Objections under this section are made by the Registrar/Examiner when there is an identical/similar trade mark in respect of identical/similar goods/services already on record in the Trade Mark Registry. In such cases, the Registrar/Examiner issues a computer generated Search Report with the list of conflicting marks. In other words, when your trademark is too identical or too similar to an already filed application or with any registered mark then objection may raise by the examiner in respect of the identity of your mark.
When the trade mark application is objected, it is stipulated that a response along with effective arguments should be filed within one month from the date of receipt of Examination Report. Once written submissions are made, the Registrar/Examiner either accepts the trade mark or posts a hearing for allowing arguments to be put forth in person. In most cases, objections can be overcome if properly represented before the Registrar.
Points to be kept in mind while replying an objection:
- Try to prove that your brand name is different from all the pending applications or registered marks.
- Try to differentiate between already registered mark classes, that how your mark class is different.
- Be specific about your product i.e. mention how your product is different from already similar name products and why your product is not going to affect their market.
- Provide the evidence of the use of your mark in the market to make an effective application in front of the trademark examiner.
If the Examiner is not convinced with the written response, a hearing is posted for allowing arguments to be put forth in person, go to the hearing with all necessary documents, photocopies and with a copy of TM-16.