Respond to TM Objection

Trademark Objection - An Overview

A trademark is a logo, symbol, tagline, or a combination of these that represents a brand’s identity. Oftentimes, during the trademark registration process, the Trademark Registrar raises objections on the intended trademark if it violates rules and laws of trademark registration. It could be due to several reasons like similarity with an existing trademark, offensive to a particular religion, absence of a distinct design, etc. In the event of a trademark objection, a comprehensive reply needs to be filed within a month, from the date of issuance of the objection.

How To File A Trademark Objection Response - A Detailed Process

When an objection is raised, the status of the trademark in the Indian Trademark Registry will be marked as “Objected”. The following are the steps to file a response in the event of a trademark objection:

Step 1: Analyzing Trademark Objection

The first step involves analyzing and studying the objection carefully, as any ambiguity in understanding can lead to incorrect filing of Trademark Objection Response.

Step 2: Drafting Of Trademark Objection Response

The next step is to draft a trademark reply which should include the following:

• A proper answer to the objection raised with supporting rule of law and precedents and judgments supporting the case
• The differences between the conflicting mark and the mark of the applicant.
• Other supporting documents and evidence that validates the response.
• An affidavit stating the usage of the trademark in the applicant’s website and social media channels; advertisement in the media; publicity material; availability of trademarked products on e-commerce sites, etc. along with the documentary proof for the same
• The response draft is then filed online on the Trademark e-filing portal.

Step 3: Trademark Hearing

If the response is accepted, the application will be processed further for registration and advertisement in the Trademark Journal. If it is not accepted, or there are additional clarifications sought by the Trademark Examiner, there would be a trademark hearing scheduled and the same will be notified with a notice.

Step 4: Publication In The Trademark Journal

If the outcome at the hearing is positive, the mark will be accepted and will be ordered to be published in the Trademark Journal.

In the event of a negative outcome, the Refusal Order will be passed, explaining the reason for the refusal. The applicant still would have the option to appeal the order by filing a review petition within 30 days from the date of the Refusal Order mentioning the grounds on which the order must be reviewed.

Step 5: Registration

Once your trademark is published in the Trademark Journal, it will be open to scrutiny for a period of four months. If no third-party oppositions are filed within that period the mark will then proceed towards registration, and the Registration Certification is issued. If an objection is filed the opposition proceedings will take place as per the prescribed rules of the law.

• Authorization letter
• Affidavit of usage
• Examination report
• Trademark hearing notice
• Documentary proof of Trademark in commercial use.
• The duly appointed applicant or the attorney has to appear before the authorities, on the scheduled date