When you file an application for a trademark, a Trademark Officer looks into your application and is in the capacity to "object" your application for many numbers of reasons.
You can check the status on your applied trademark on the Indian Trade Mark Registry website. If the status shows as "objected", then it is to be concluded that you need to take action because the officer has raised concerns about your application under Sections 9 and 11 of the Trademarks Act.
There are many reasons why your application may be objected. Here, in this article, we have look at the most common ones.
You have not used the correct Trademark form
Filing trademark can be quite a hassle, despite the government making sure that such is not the case. In case you happen to not have used the correct Trademark form, your application stands to be objected by the Trademark Examiner.
The objection that will be raised is: "The application is made on form TM-1, for certification mark in respect of goods or services falling in a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16."
The means to tend to this objection is by filing in a request to correct the trademark application by filing in a request using form TM-16.
You have used not used the correct Trademark Applicant Name
The trademark applicant name needs to be mentioned correctly. In case you have not done so, the trademark officer is entitled to object to your application.
The objection that will be raised will be: "The application appears to have been filed in the name of a partnership firm, names of all Partners of the firm should be brought on record by filing a request form TM-16"
The applicant whose trademark application has been objected due to incorrect trademark applicant name can tend to the objection by filing in a request to correct the trademark application through form TM-16.
The Trademark Form TM-48 has not been filed by your agent
The basic thumb rule is that whenever a trademark application has been filed by a trademark attorney or a trademark agent on behalf of you, the applicant here, trademark form TM-48 has to be duly filled and attached.
In case you have forgotten to fill and attack form TM-48 or have incorrectly executed the form, the objection that will be raised by the trademark officer is: The application has been submitted by a person other than the applicant, a duly stamped Power of Attorney in favour of a particular agent should be filed.
As an applicant whose application has been objected, you can overcome it by filing in a request to correct your application form through form TM-16.
You have mentioned incorrect address on the trademark application
You need to be very careful in filling the trademark application form. One slight mistake in the address and the trademark can raise an objection to it.
You have to mention the principal place of business. Even if your address for the services in India is not mentioned, the application can be duly objected to.
The objection raised will be: The Principal Place of business of the applicant should be brought on record by filing a request on form TM-16 or The applicant's address for service in India should be brought on record by filing a request on form TM-16, since the applicant has no principal place of business in India.
Like before, to make amends and to correct the application form after it has been objected, you need to do it through form TM-16.
You have vaguely specified goods and services
When you fill in the form, you have to be specific. If you casually specify the goods and services, or you specify something that covers a large variety of goods and services, then an objection can be raised by the trademark examiner.
Here is the objection that you will come across: The specification of goods/services mentioned in respect of class xx, is very vague and wide. You should provide exact items in respect of which the trademark is sought to be registered, by filing a request on form TM-16.
You need to take the corrective actions through filing in a form TM-16 and requesting for change in your original form.
If the same trademark or a similar trademark already exists
In case the trademark examiner finds same or eerily similar trademarks already in his records for the same product or products similar to the goods and services you want to trademark, your application will be objected duly.
The trademark applied for registration is not registrable under Section 11(1) of the Trade Marks Act 1999 since identical or similar marks in respect of identical or similar description of goods or services are there on records and because of such identity or similarity of marks and goods or services there exists a likelihood of confusion on the part of the public.
For example, if you file for a trademark "Amazone", it will be rejected because it is too similar to a trademark that exists. Such trademark applications only make things easier for the trademarks office, because they tend to mimic the famous trademarks.
In such a case, you have to frame a reply to the trademark examination report and explain how the trademarks, that have been same or similar to yours, are in effect different to the one you have applied for. And just arguments will not do. You have to submit enough evidence for the trademark officer to overturn his decision.
Your trademark lacks an exclusive character
The basic purpose of trademark is to help your goods and services stand out of the traffic in the marketplace. If your trademark name - the one you applied for - does not do justice to that, and does not help you distinguish from the clutter, it will be rejected underabsolute grounds for refusal of trademarks.
For example, trademark "Shiny Hair" will be rejected as a trademark for a shampoo because all it does is define how your hair will be. It lacks the unique character that is needed to differentiate it from the rest out there.
To refute that, you will have to submit a response, with proof, how your product is unique and has a distinct character that will serve to keep trademark's USP in place.
Your trademark is deceiving
The trademark office will not let anyone fox the buying public. If your trademark has connotations of deception, where the mark itself, or the quality or nature or geographical origin of the goods or services, can be used to delude the public, the trademark application will be strictly objected.
You may use TM-16 to file for a revision but you will need strong grounds to get your application through, unless of course you have reworked the trademark you will be filing for.
There are many other reasons why your trademark application can be stalled with an objection, but the ones listed above are the most common ones.
But before we close this article, here is a little briefing about how to go about it once your application has been objected to:
- Once your application is rejected, you have to take an action within one month from the date on which you have received the Examination Report.
- The Trademark Registry mostly does well to upload these online on their website but you may not get a formal intimation. So, you need to be alert and have regular visits to the website.
- Once the trademark has been objected to, it is imperative that you put forward a solid response composed of reasonable argument to get the process started again.
- Once you have done so, the trademark officer/registrar/examiner can either accept the trademark or make arrangements for a hearing so that the person can out forward his arguments in person.