A trademark can be objected on various grounds and reasons, through this article we would discuss some of the major reasons which lead to objection of a particular trade mark
Soon after the application for the trade mark is filed, the trader mark examiner goes through the application and also looks for earlier trademarks which are identical to the one being applied for. Once he is done with the screening process, he files the report termed as trade mark examination report.
One of the most common mistakes while filing a trade mark is the use of incorrect form. If the trade mark application is not made on a proper form, the trade mark examiner raises the trademark objection at the preliminary level. Once the trade mark examiner advises on the correct use of the form, the applicant can overcome the discrepancy by filing a request via form TM-16.
Missing out on filing Trademark form TM-48
In case of a trademark application filed by Trademark attorney or Trademark agent on behalf of the applicant, it is mandatory to include the TM-48 form.
On occasions, when the said form is not attached, the Trademark examiner advises to attach a duly signed Power of Attorney in favour of the agent. Even in this case, the corrective measure is ensured by requesting to correct the application by filing a TM-16 form.
If the applicant has not mentioned the place of business or if the applicants address for services in India (when the foreign party is involved) is not mentioned, the examiner swings into action and raises the objection. He may advise the applicant to bring to record the principal place of business by filing the form TM-16
Convoluted specification of goods and services
The services for which the trademark is sought need to be very specific and explained in detail for the trademark examiner to make an appropriate decision. If the applicant fails to do so and appears to have provided a vague description of his services encompassing a lot of unnecessary details, the trademark examiner is expected to raise his objection. The corrective measure involves filing the form TM-16 requesting to change the original application.
Same or similar trademark
Now this is one of the most important points. In case there is a similar or same trademark already in the market, the objection is raised by the trademark examiner. He may cite sections of the Trademark act to make the applicant understand the discrepancy better.
Section 11 (1) of the Trademark Act 1999 clearly states that since similar or identical marks are already there on the record, the new mark may create confusion in the minds of public.
If the applicant is confident of the originality of the trademark, he can reply to the examination report by saying that the marks mentioned in the report are different than the one filed by him. However, all his claims must be evidenced by substantial proofs.
Lacking distinctive character
If the trademark does not have the distinctive character to differentiate it from the goods and services provided by some other company or individual, it is liable to be objected. If the applicant thinks that the mark has distinctive features, he can object the absolute grounds for refusal of mark by filing an application and proof that the mark has established a distinctive feature due to its previous use.
A trademark examiner can raise objection if he thinks that the mark is potentially deceptive due to its nature, use or the products and services it is trying to sale. If the applicant wants to overcome the issue, he will have to file form TM-16 seeking to exclude goods and services from the specifications.