When the objection is raised by the trademark officer on certain grounds the applicant is required to respond to it. This response is termed as the reply to a trademark examination report.
Obtaining trademark registration is not an easy task as it appears. The applicant is required to go through several stages in order to get his trademark registered. The only way to get the trademark registered without any hassles is to choose a unique name with distinct characteristics. It takes at least 8-9 months to get the trademark registered. The main motive behind the trademark registration in India is to promote innovation and protect it from infringement. When a trademark registration application is filed it is sent to the trademark officer for being examined. The trademark officer carefully checks the trademark filed and either approves the application or raise objections to it. In case an objection is raised the applicant is empowered to file a reply to trademark examination report with denial. After considering the reply field the officer will determine whether the objection can be removed or not.
To begin first we will understand the meaning of examination report.
What is examination report?
After carefully checking the trademark filed and conducting a trademark search the trademark officer presents their opinions and analysis about the scope of the mark getting registered. These opinions of the trademark officer are compiled together in an examination report which is sent to the applicant. It is put up on the official website of the trademark along with the details of trademark registration.
What is the reply to a trademark examination report?
In response to the trademark, objections raised the applicant is required to file a reply within 30 days of receiving the report. The response can be submitted either by the applicant agent himself or by his duly authorized agent. This reply can be filed by uploading it on the trademark website.
What replies are required to be filed in different objection cases?
Objection related to the formality requirements
While filing the trademark application the applicant shall make sure to comply with the requirements of the trademark department. In case the person fails to comply with them a formality check fail will arise.
Objection related to wrong classes of goods
An objection will be raised by trademark officer if the goods and services mentioned in the application do not fall into the trademark class mentioned. The applicant is required to request the department to correct the class of goods that as per classification of goods or services published by the Registrar and state that goods or services have been rightly classified.
Further, if the objection is raised because some of the goods mentioned in the application do not fall in the specified class the applicant is required to file the amendment application by deleting the items that do not belong to the class mentioned. Moreover, the applicant is required to state that according to the classification of goods and services published by registrar every item fall in the class specified in the application.
Objections related to absolute grounds
In the examination report issued it is stated that the objection is raised in consonance with section 9 of trademark act. What does section 9 states? Section 9 deals the absolute grounds for trademark objections. These grounds are basically concerned with the public at large rather than any specific third party.
According to section 9 (1) of trademark act, 1999 the trademark applied shall be distinctive and non -descriptive. This indicates that the trademark applied shall not be similar to the existing trademark and it should not reflect the quality or any features of the goods or services.
For instance, if a mango selling company desire to get mango as the trademark it will be a descriptive trademark however if the company selling clothes chooses this trademark then it won’t be considered as the descriptive trademark.
When the objection is received in these regards the applicant must file the reply stating that the trademark applied to him uniquely identifies his products and or services. Moreover, the distinctive character is obtained by the trademark in view of its wide use in relation to relevant goods or services, before the date of application. To prove this an affidavit as evidence of the use of the trademark along with supporting documents shall also be attached.
Objections related to the existence of similar the trademarks
The objection may be raised by the trademark department based on the relative grounds specified in section 11 of Trade Mark Act 1999. These relative grounds state that the trademark applied before the trademark registry cannot be similar or identical with the already existing trademark. The main motive behind this rule is to protect the general public from confusion or deception as to the origin of the goods or services. When the objective is raised on these grounds the applicant is required to file the reply stating the difference between the cited mark and his mark along with supporting evidence.