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How to Clear Trademark Objection in India?

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How to Clear Trademark Objection in India

Overview of the Topic

To promote the products of a business entity and to have a share in the market it is important to have separate identification of the products so that they can be differentiated from the products of competitors. In this regard Trademark registration becomes a tool to provide distinct identity to the products of a business entity and differentiate them from the products in the same category.

However, it is to be noted that it is not easy to obtain trademark registration, it is a myth in the market that trademark can be registered merely by filing the application for Trademark Service. But things are not that simple as they may appear. You must see beyond the surface to know more.

In this article we will learn about various stages of Trademark Registration, and if objection is raised then how to clear such objection in the Examination Report.

Trademark Registration

To dig dipper into the topic it is important to know the meaning of trademark. Trademark refers to any word, Mark, design, phrase or any colour combination which helps any one to clearly identify the products bearing such marks or design from the products which do not bear them.

When such mark is registered under Trademark Act, 1999 then such mark is known as registered mark.

When a trademark is applied for registration from that day onwards proprietor of mark can claim against the infringement by third person in the following ways:

  • ™ can be used to the “Trademark” for the application for registration has been filed.
  • ® can be used to the “Trademark” which is registered under Trademark Act, 1999.

Various stages in Trademark Registration process

Stage 1: Trademark Search

Before applying for Trademark Registration, it is important to do a thorough research on trademark and prepare a trademark search report mentioning therein the availability of proposed mark under thew class under which it is to be applied.

To search the availability of Trademark visit at public search of trademark portal i.e., https://ipindiaonline.gov.in/tmrpublicsearch/frmmain. aspx

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Stage 2: Filing application for Trademark Registration

After you choose a unique logo or mark to be registered, the next step is preparation and filing of application for trademark registration. The application is to be filed in form TM-A properly mentioning therein the credentials related to applicant and class in which it is to be applied for. There are two modes for filing application for trademark registration i.e., online, and offline. However now a days mostly online mode is used to file application for trademark Registration. Compliance Calendar LLP can help you with filing your trademark application in efficient manner along with detailed trademark search report so that objections in examination report to be issued by the examiner of mark can be avoided.

Stage 4: Examination of filed application.

Once application of trademark registration is received it is forwarded to the examiner for detailed examination of the application. There are two stages of examination these are explained below:

Initial examination/ formality check pass: the first stage of examination is formality check, in which the validity of content of application is checked for example: whether the credentials of the applicant are correct or not, whether the correct form is used or not, whether the correct class under which it is applied for is mentioned correctly or not. After such examination if it is found that there are no errors then application is said to be passed the “formality check pass” and is send for detailed examination, on the other hand if it is failed in this test then TM-M is required to be filed to modify the application along with some additional fees.

Detailed examination: After formality check pass detailed examination of the mark is to be done. During this stage grounds of refusal given under section 9 and section section11 are to be checked. If objections are raised at this stage, then examination report is issued to the applicant or his authorized representative as the case may be. And the application is marked as “waited for examination reply”.

On the other hand, if no discrepancies are found in the application, then application will be accepted unconditionally and sent for publication.

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Stage 5: Publication for mark in Trademark Journal

When the application is accepted unconditionally, or examiner is satisfied by the reply filed in response to the examination report then the application will be sent for publication in the Trademark Journal and the application will be marked as “Accepted and Advertised”.

On Publication in Trademark journal, it is open to public to raise opposition to such mark within prescribed time period. If opposition is raised, then counter statement to such opposition is to be filed, if no opposition is field within time prescribed then the registrar of trademark will register the applicant’s mark and issue certificate of registration under his hand and the mark stands registered.

On the other hand, if opposition is filed by the public, then counter statement and evidence to such opposition are to be filed in prescribed time period and if registrar is still not satisfied with the counter statement, then it can call the hearing process for further clarification, on basis of filed counterstatements and other documents and hearing mark can be registered under trademark portal or rejected.

Stage 6: Registration of Trademark

If registrar is satisfied with the counterstatements and evidence filed in response to the opposition or no opposition is filed, then registrar will register the mark in the trademark registry and a certificate of registration will be issued to that effect will be issued under his hand.

How to deal with objection issued in the examination report by the examiner of mark:

All care should be taken while filing the application for registration of trademark to make sure that no objections are issued by the examiner in examination report. However, if still objections are raised then following points are to be kept in Mid while filing reply:

  • The reply to the examination report is to be filed within 30 days from the date of receipt of examination report.]
  • However, it is to be noted that in case applicant fails to file the reply to the examination report within the prescribed time period then extension of time can be granted on filing application for such extension and payment of additional fees.
  • While filing reply please make sure that the grounds under which objection is raised should be read thoroughly.
  • Reply is to be prepared to the point without leaving single ground unanswered.
  • Also, if required quote the decided case laws and relevant sections of Trademark Act, 1999 in support of your reply.

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