Trademark Objection in India
The trademark objection process in India is a process following the registrar’s approval of this trademark request on basis of distinctiveness. They also published the trademark application of the third-party opposition within the publication.
A trademark objection can be one of the first steps during the initial stage of the Trademark Registration process. Trademark objections do not mean the same thing as a simple denial. Instead, the trademark registrar is seeking an explanation or reason regarding the trademark and registration. The trademark registrar gives the applicant to provide evidence of the way in which the trademark is compatible with the requirements to obtain the right to register.
If there is a trademark objection an extensive response must to be submitted within one month from the date of publication. There are a variety of reasons to consider Trademark objections, such as similarity to an existing trademark and offensive trademarks, the absence of originality, etc.
Read More: Indian Company Registration
Eligibility
In accordance with Section 21, of the Trademark Act, ‘any person is able to oppose the trademark regardless of their personal or commercial concern in the matter.
A trademark can be challenged through a trademark opposition filed by a consumer or public figure, competitor, or by any other individual. The person who files opposition to a trademark must be a previous proprietor of a trademark registered.
When a trademark objection is filed, both parties must decide if it is appropriate to discard or registered.
Anyone who thinks that the trademark’s publication could cause confusion among people can file the opposition, while the trademark is in the hands of the trademark registrant.
Grounds For Trademark Objection
In the Indian trademark law doesn’t offer particular grounds for opposition. There are a variety of reasons why opposition to a trademark could be resisted as follows:
- The trademark is comparable or identical with an earlier or previous trademark that is registered.
- The trademark lacks distinct character.
- The mark is descriptive.
- Application for trademark registration was created in poor good faith.
- The trademark objection is used in the present language or in the accepted procedures of a company.
- The trademark may confuse the public or create confusion.
- The trademark is against the law or prohibited by the law.
- The trademark is banned by the Emblem and Names Act, of 1950.
- The trademark includes matters that could hurt any group or segment of people’s religious sentiments.
Procedure for Trademark Opposition
Opposition Notice
Within four months from the date of first the publication date, anyone is entitled to make a formal contest to the trademark which is published on the website of the trademark magazine.
The trademark must be submitted with the Trademark Form 5 in the prescribed format, along with the appropriate fee.
Counter-Statement
The trademark registrar will send a copy of the trademark objection notice to the owner following the time that the notice of opposition has been received by the registry. The trademark owner must submit the counter statement within two months of receiving the notices of opposition.
The trademark application is “abandoned” in the event that the trademark owner does not submit the counter statement within the stipulated time frame. It is nevertheless necessary to be aware of the state of registration of trademarks.
Hearing
Following the stage of filing evidence The registrar will notify both sides informing them of the date of the hearing, that date must take place at least one-month following when the initial notice. The hearing is based upon the counter-statement, opposition notice filing, and the evidence filed. The registrar decides on the case in the event that one of the parties fails to show up for the hearing the registrar will decide against the parties.
Appeals
The registrar will decide if the challenge was successful based on a review of evidence and an audition between both sides, whether the trademark is licensed or not. But, a person who is unhappy with the registrar’s decision can appeal before the Intellectual Property Appellate Board.
Time Limit for Trademark Opposition
Following the advertisement for the trademark appearing in Trade Marks Journal, any individual can challenge any trademark application for a period of three months (which could be extended by a time not more than the duration of one month). The filing of trademark oppositions can only be filed in the Trademark Registrar’s Office and are not able to be submitted to the Court or to the Appellate Board directly (IPAB).
If a trademark objection is successful and the trademark’s registration is successful, it is canceled. The trademark will be registered only if the trademark opposition is denied.
Read More: Trademark Withdrawal
Filing Trademark Opposition
- The details of the trademark application in which opposition is filed
The number of the application that opposition to is filed together with the indication of the product or service included in the application for trademarks for which objection is made along with the names of the person who applied of the mark.
- The details of the earlier mark or of the earlier right upon which the objection is upon
If the challenge stems from an already filed trademark application or registered trademark, then the application or the registration number for that prior mark. If the challenge is based on the claim of a mark to be a well-known trademark, then it should be an indication of the country or region in which the mark prior to it is believed to be well-known.
- Information about the opposition party
When the contest is made by the owner of an earlier mark or the prior right the name and address of the proprietor and a declaration of his status as the owner of the mark or rights. In the event that an opposition has been filed through the successor to the title of the registered owner of a mark that is not yet recognized as the new owner with the address and name of the party opposing it and indications of the date the day that the registration application of the new owner has been received at the relevant office. If the opposition party has no office in India The name of the opponent as well as his address for services in India.
- The grounds on which the opposition is founded
Form TM-5
To contest a trademark, Form TM-5 has to be filed by the person opposing. In accordance with the application, the opposition to the trademark should be filed at the trademark office of the proper. The TM-5 form must include the following information:
Information about the trademark application
- The impugned application number
- The indication of the product or services in the trademark application
- Name of the person who applied in the search for the mark sought challenged.
Information about the opposition party
- In the event that the challenge was made by the trademark owner of a mark that was previously owned
Address and name of the trademark’s owner, as well as the proof that he is the trademark owner for the trademark.
- If trademark licensees file an opposition
Address and name for the licensee of the trademark, along with evidence that the licensee is authorized to participate in the contest.
- If an heir files the opposition to the trademark owner’s
Address and name of the successor, as well as an indication of the date when the registration application of the new owner has been accepted by the relevant office, or if this data isn’t available given to the appropriate office.
- If a person from outside India file an opposition
Name and address of the opposition’s service
The trademark opposing party or an authorized person who has knowledge of the details of the case must sign the notice of opposition.
Differentialities Between Trademark Objection and Trademark Opposition
There is a lot of confusion between trademark opposition and trademark objection. This table will clarify the main differences between trademark objections as well as trademark objections.
| Trademark Objection | Trademark Opposition |
|---|---|
| An Trademark Examiner issues a trademark objection. | A trademark is challenged by an outside entity. |
| One does not have to pay fees. | Fees have to be submitted with the answer to the objection. |
| The response should be received by the end of the month. | A response should be sent within three months(which can not be longer than one calendar month) |
| Trademark objections are a component of the registration procedure. | An opposition to a trademark is a separate procedure. |
| If there isn't a reply from the applicant can lead to the cancellation of the mark. | The same is true for trademark opposition. No response will result in the cancellation of the trademark. |
| An appeal may be filed following the rejection. | An appeal may be filed after the decision is made. |
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Conclusion
In conclusion, it is safe to affirm that submitting a trademark application is an arduous task that demands a lot of focus. Selecting a trademark to represent your company is the initial step companies take when beginning their business.
To prevent trademark objections it is best to engage a lawyer prior to starting the process of trademark registration to ensure that there are no objections to your trademark, which will help you save time, money, and your brand.
FAQ’s
The term trademark refers to a type of intellectual property made up of a distinctive symbol or design that distinguishes the products or services from one particular source from those of other companies, however, trademarks used to distinguish services are often referred to as service trademarks.
You can access the report on the examination of the trademark objection through the official website that is maintained by IPI India.
TM Expert creates and files a response within 3 working days following the receipt of an objection dependent on the accessibility of documents.
If the status indicates opposition, you may be eligible to file the response to the trademark objection you have that is mentioned in the report of examination.
The reason behind the objection may be numerous, whether it is a concern with the filed documents or the compliance with criteria set by the statute and the rules.
The application must be approved by the officer, but if they fail to submit it otherwise, your application is denied.
If you are rejected, you may approach for Intellectual Property Appellate Board.
No, there’s no cost to the government for filing the response to the exam.
