How to overcome a Trademark Objection in India?

Trademark objection in India

A trade mark application is filed in a specific class for specific goods and/or services. Shortly after that the application proceeds to examination, during which the Registrar of trademarks may call for certain additional requirements for registration, object the application or accept it unconditionally.

The trademark objection in India is usually under the ABSOLUTE grounds or RELATIVE grounds as below:

  • Absolute grounds: The objection of a trademark is often under Section 9(1) (a) of the Trade Marks Act 1999, if the mark is descriptive or non-distinctive as such that it is not capable of distinguishing the goods and services of one business from others, or is something that indicates kind, quality, quantity, intended purpose, values, geographical origin of the product.
  • Relative grounds: The objection of a trademark can also be under Section 11 (1) of the Trade Marks Act, 1999, if the mark is identical with or similar to earlier marks in respect of identical or similar goods and services, and due to this there exists a likelihood of confusion on the part of the public.

The examination report contains the reason for the objection along with a list of conflicting marks if any.

What are the reasons for trademark objection in India in detail?

Absolute grounds for trademark objection

Section 9 of the Act lays down scenarios in which the trademark will not be registered as below:

  • Marks which are devoid of any distinctive character. Such marks are not capable of distinguishing the goods or services of one person from those of another.
  • Marks which which serve in trade to define the kind, quality, quantity, intended purpose, values or geographical origin of goods or services rendered.
  • Marks which have become customary in the current language or the established practices of the trade.
  • Marks which deceives or cause confusion to the public.
  • Marks which are likely to hurt the religious sentiments of any class or sections of citizens of India.
  • Marks which contain scandalous or obscene matter.
  • If the usage of the trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
  • Marks which consist of the shape of goods which result from the nature of goods themselves.
  • Marks which consist of the shape of goods which is necessary to obtain a technical result.
  • Marks which consist of the shape which gives substantial value to the goods.

Exception: The trademark shall not be refused registration if the mark has acquired a distinctive character as a result of prolonged use or is a well-known trademark before the date of application for registration.

Relative grounds for trademark objection

Section 11 of the Act provides relative grounds for objection/refusal of registration. This section provides exceptions to the grounds of refusal. If the exceptions are complied with, then the trademarks under section 11 can be registered.
Section 11(1) states the following grounds for objection–

  • Trademarks which are identical with similar goods or services.
  • Trademarks which are similar of earlier trademarks with identical goods or services.

Exception: If there is an honest concurrent use of the trademark, the Registrar of Trademarks may allow the registration.

Section 11(2) states the following grounds for objection –

  • Trademarks is identical with or similar to an earlier trade mark; and with different goods and services but
  • Which would be likely to take unfair advantage of the well known similar or identical earlier trademark in India.

Section 11(3) states the following grounds for objection –

  • The usage of the trademark is prevented by the law of passing off protecting an unregistered trademark used in the course of trade.
  • The usage of the trademark is prevented by virtue of law of copyright.

Section 11(4) provides an exception that the trademarks shall not be refused registration if the the proprietor of the earlier trade mark or other earlier right consents to the registration or unless an objection is raised in opposition proceedings by the proprietor of the earlier trademark.

Overcoming Trademark Objection in India

An examination report is usually accompanied by a list of conflicting marks. The applicants must study the conflicting marks cited by the Indian Trademarks office for objecting the mark and then file a proper response along with their arguments to overcome the refusal/objections. This response needs to be filed within ONE month of the date of communication of the examination report to the applicant.

An applicant must file a response along with an statement requesting the Registrar to review his decision within 30 days of such refusal notice.

Rule 119 of the Trade Marks Rules 2017 states that ‘An application to the Registrar for the review of his decision under sub-section (c)of section 127 shall be made in Form TM-M within one month from the date of such decision or within such further period not exceeding one month thereafter as the Registrar may on request allow, and shall be accompanied by a statement setting forth the grounds on which the review is sought’.

Section 127 in The Trade Marks At 1999 states the Powers of Registrar and sub clause (c) of the Section states that ‘the Registrar may, on an application made in the prescribed manner, review his own decision’.

Further, on dismissal of review petition, the applicant also has an option of filing an appeal before the Intellectual Property Appellate Board (IPAB) within 3 months of the dismissal.