Dealing with TM Objection raised in an examination report

A detailed procedure has been prescribed to be followed in order to Register Trademark in India, is discussed in our previous blog Trademark Registration Procedure & Process in India. Here, we are discussing about the Verification of Online Trademark Registration Application by the concerned Registry of Trademark. 

Know the Procedure:

Once the application for online Trademark Registration in India has been filed, the Trademark Registry reviews the application filed to ensure that it is complete in all respects.

The application is reviewed by the competent authority being the Examiner keeping in mind the provisions prescribed under Trademarks Act, 1999 and Draft Trademark Manual issued by the Trademark Registry.

After their thorough review, the examiner may issue a positive report and pass the application for advertisement in the Trademark Journal, which is considered as “Accepted & Advertised”. However, during the registration process, a trade mark is rarely accepted without objections from Registry.

During the verification by Registry, Examiner also looks into the data base of Trademark Applications received to Registry and Examiner observes any identical or similar Trademark already applied or registered, the same is communicated to Applicant through publishing Examination Report.

Observations and findings of the examiner are recorded in the Report called the Examination Report, which is issued to the applicant seeking the clarification, explanations or grounds of the application by way of written submission or hearing.

Once the examination report will be issued by the Registry, an applicant can view and download the Report which should be replied at given time by the applicant himself or through his/her attorney.

Tracking the Status: What to do?

After issuance of the Report, the status of the application on the portal shows as “Objected” showing alert as “Awaiting Reply to Examination Report.”

The reply to the examination report issues is to be made within 30 days of receipt of the Examination Report, failing to which Registry may abandon the application made i.e. the applicant has to give up the claim over the Trademark. Hence, the status of the Application shall be checked regularly in order to avoid any difficulty or hassle in claiming the rights over the Trademark.

 Why Examination Report is issued: Know the Grounds

The grounds of objection can mainly be classified in the following manner:

• Absolute Grounds of Refusal (Section 9)

The trademark which consist any of the following characteristics is objected by the Trademark Registry in order to prevent the monopoly of the Owner:

• Where the mark is not capable of distinguishing the goods or services of one person from those of another person;
• Where the mark is indicating the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services (e.g. Delicious Snacks);
• Where it consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practice of the trade;
• Where the mark is of such nature as to deceive the public or cause confusion;
• Where it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
• Where it comprises or contains scandalous or obscene matter;
• Where its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950

• Relative Grounds of Refusal (Section 11)

This section restricts the registration of Trademark, where possibility of confusion exists on the part of the public due to the identity with an earlier trade mark or similarity of goods or services.

Trademark Objection may come on the ground if the Trademark (Word mark) is phonetically similar to the existing Trademark applied to the Registry.

There are few more grounds where Registry may consider issuing Examination report such as, visual similarity in the design, pattern, fonts, and colour combination in logo as well as in Word mark applied for with the existing applications received by the Registry.

Other Common Grounds:

• Use of incorrect form for filing Online Trademark Registration in India;
• Vague specification of Goods and Services;
• Specification not as per the Nice Class heading given by the Registry;
• Descriptive Nature of the trademark applied for;
• Incorrect details entered in the Application;
• Wrong classification of Trademark Class, etc.

Response to Examination Report:

 The applicant or the attorney has to file a response to the examination report to the objections raised in the examination report within the stipulated time after the comprehensive analysis of the grounds of objection raised by the Examiner.

The reply shall be drafted in a manner which can construct supportive grounds and able to give proper reasoning why the mark applied for is unique in nature and does not fail to comply with the provisions of the said law.

Where there is no format prescribed in respect of the reply to examination report, being an applicant to the Registry one enjoys all the rights to deliver the clarification asked for with proper reasoning.

However, in addition to above one shall not oversight certain factors which are generally accepted in the practise.

Further, it is highly recommended to consult professional for drafting and filing the Reply as they are experienced with recent case laws and trademark provisions which are to be taken care for filing the reply to satisfy the queries raised by the Registry in the best professional manner.

Post Filing the Reply:

Once the Reply to Examination Report is filed on the portal, the status is turned to “Objected” replacing the alert of “Awaiting to Reply.” Now, the applicant has to rest and wait for the further response from the Registry.

The examiner may either accept the response or schedule a hearing according to the satisfaction to the reply filed.

• Where the reply filed or the hearing is to the satisfaction of the examiner, the examiner orders publication of the Trademark in Trademark Journal.
• In case, the response fails to the satisfaction to the examiner, the applicant can avail an opportunity of hearing before the Trademark Registrar, where he/she can present submissions orally.