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Taxapillar Services

Business Tax Return Filing

Trademark Objection

An Introduction to Trademark Objection in India

Trademarks are a crucial aspect of a business's intellectual property. While numerous trademarks are submitted each year, not all are approved. In order to identify older trademarks that may be similar to the mark being reviewed, examiners conduct extensive database searches. The trademark examination report explains the findings of the examiner's research and the reasoning behind the trademark objection process.

Why Choose Taxapillar?
•    Taxapillar is the optimal choice for those seeking prompt and efficient legal assistance. Our team of highly skilled attorneys possess the expertise to navigate the trademark objection process in India seamlessly. 
•    With our in-house trademark specialists, all formalities are promptly taken care of with minimal complications. We welcome you to visit our website and commence your legal proceedings without delay.

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Trademark Objection

What are the Criteria for Determining Eligibility for Filing a Trademark Objection?
When it comes to trademark objection, there are several common eligibility requirements that must be met. 
•    Firstly, the trademark being considered must be either similar or identical to an already existing trademark within the same category of goods or services. 
•    Additionally, the use of the trademark could potentially cause confusion among consumers or lead to mistaken identity with another trademark. 
•    Furthermore, if the trademark in question is descriptive of the goods or services being offered, it may not be eligible for trademark protection. 
•    If the trademark is considered offensive or derogatory towards a particular community or group of people, it may also be subject to objection. 
•    Finally, if the trademark is found to be misleading or deceptive, leading to a false impression about the quality, origin, or source of the goods or services, it may not be eligible for trademark protection.

What is the Process for Addressing Trademark Objections?
To effectively monitor the status of your trademark application, it is important that you keep tabs on any updates. This may include 
•    Investigating any trademark complaints that may arise, as well as filing a trademark objection reply in a timely manner
•    Prior to submitting your response, it is advisable that you review and double-check it to ensure that it accurately addresses the department's concerns. 
•    Seeking commentary on your response can also be beneficial. 
•    If the response is deemed satisfactory, your trademark will be published in the trademark journal. 
•    It is important to note that as an applicant, it is obligatory to attend the hearing for your trademark.
What are the main causes for Trademark Objection in India?
Effect of invalid trademark application:
If the trademark application is not in the correct format, the registrar will initiate a trademark objection process. To remedy this, the applicant must submit a trademark alteration request on form TM-16. 
Effect of Invalid applicant name on trademark application:
In the event that the applicant name on the trademark application is incorrect, the relevant authorities will initiate the trademark objection process. As per the rules and regulations, the correct applicant name should be submitted on the trademark application using Form TM-16. If any errors are present, the applicant may request alterations through the same form.
Effect on TM -48 form improper submission:
If the form TM-48 is not submitted correctly, it can lead to a trademark objection process initiated by the examiner. In case someone other than the applicant submits the form, they must have a power of attorney in their favor. To overcome an objection due to an erroneous or incomplete form, the applicant must request for reasons and rectify the application accordingly. Therefore, a request for the trademark application to be rectified is necessary to override an objection due to a wrong or incomplete form TM-48.
Effect on Address in TM-16 form inaccurate: 
If the address provided on Form TM-16 for a trademark application is incorrect, it can lead to the initiation of the Trademark objection process by the relevant authorities. To avoid this, the applicant's Indian address must be accurately recorded on the form as they may not have a substantial place of business in India. In case of an error, the applicant can submit a request for rectification of the trademark application using Form TM-16.

Improper description of goods and services impact:
In addition, it is important to provide a precise description of goods and services for Trademark Class xx on Form TM-16, as the broad and vague description can lead to concerns being raised. If there are any issues regarding the specification of goods or services, Form TM-16 can be used to propose corrections to the trademark application.
Identical trademark impact:
If a trademark that has already been registered is similar to the trademark being applied for, there is a high likelihood that the current trademark owner may object. According to the Trade Marks Act of 1999, if there are already registered trademarks for goods or services that are comparable or identical to the applied trademark, the trademark application cannot be registered. Identical trademarks among the trademarks may lead to confusion among the general public. The applicant can take corrective action by stating that the listed competing marks are different from their own.

How to prepare and submit an effective response to Trademark Objection?
In accordance with the regulations, it is compulsory to submit a response to the authorities regarding a Trademark objection within the designated time period. The process of handling a Trademark objection can be easily managed by Taxapillar without any complications. Upon receipt of a Trademark objection notice, it is imperative to thoroughly read and assess the grounds for objection. 
•    The foremost measure is to file a counter statement to the Trademark objection procedure within two months from the date of receiving the notice. Subsequently, the registrar will prepare for a hearing subsequent to receiving the response. 
•    The provision of evidence and other important documents to support the argument is permissible. In the event that the registrar rules in favour of the opposing party despite the submission of documents, an appeal can be made to the Intellectual Property Appellate Board (IPAB).
•    The submission of the counter must be completed within a period of three months from the date of the issuance of the order. In the event of any delays, the applicant shall provide an explanation along with a fine of ₹2500. 
•    If the explanation is deemed acceptable, the IPAB shall set a date for the hearing. The filing process must be carried out in accordance with the rules and regulations prescribed by the IPAB. 
•    All documentation must be duly verified and the application must be endorsed by the deputy registrar. If the deputy registrar identifies any defects in the application, a notice shall be issued. 
•    The necessary amendments must be made and submitted within a period of two months. Any delays in doing so shall result in the application being abandoned. The IPAB shall render a decision on the case based on the submitted documentation.

How to address the Raised Objection Promptly?
When facing an objection to your trademark application, it is important to take certain steps in order to respond effectively. 
•    Firstly, it is necessary to review the objection notice and carefully analyze the grounds on which the objection has been raised. This will allow you to identify areas where your trademark application may be lacking and where improvements can be made.
•    Additionally, collecting all relevant evidence, documents, and facts that support your trademark application can be beneficial. This includes providing evidence such as prior usage and distinctive character, as well as any other relevant information that may strengthen your case.
•    Our first move is to prepare a written reply that deals with all the issues mentioned in the notice. Make sure to explain how our trademark application meets all the legal requirements and does not infringe upon the rights of any other registered or pending trademarks. 
•    Once we have our response ready, we'll need to file it with the trademark office within the next month. It's important that we stick to this timeline, as failing to respond could result in our application being abandoned. 
•    After we've submitted our response, we'll want to keep an eye out for any further communications from the trademark office. We will be ready to furnish any further information or modifications if required.