Main Reason for Trademark Objection
Posted: Jan 20, 2020
When the application for the trademark is filed, the examiner of the trader mark goes through the application and also looks for earlier trademarks which are identical towards the one being applied for. After the examiner is done with the screening procedure, the examiner files the report termed as trademark examination report.
A Trademark application could face an objection for several reasons, they are:
Use of Incorrect Trademark Form
If the application is not made on the correct form, an objection can be raised by the trademark examiner. The statement of the examiner would read as: "The application is made on Form TM-1, for certification mark in respect of goods and services falling in a class, the form of the application should be corrected as TM-4 by filing a request on TM-16".
The individual could overcome this objection by requesting to correct trademark application through filing a request on form TM -16.
Incorrect trademark applicant name
The name stated in the application should have the names of every partner and should be filed in the name of a partnership firm. The same should be filed on TM-16.
The individual could overcome an objection for incorrect trademark applicant name through requesting to correct trademark application by filing a request on form TM -16.
Failure to File Trademark Form TM-48
Whenever a trademark application has been filed by a Trademark Attorney or Trademark Agent for the individual, Trademark Form TM-48 should be attached. If Form TM-48 is not attached or incorrectly executed, the Trademark Examiner will raise and objection as following:
The individual could overcome an objection for failure or incorrect Form TM-48 filing through requesting to correct trademark application by filing a request on form TM -16.
Incorrect address on the trademark application
If the application has not mentioned the principal base of the individual, then the objection therefore raised will be as follows: ‘The principal base of the applicant should be brought on record by filing a request on TM-16.’
The individual could overcome an objection for incorrect address through requesting to correct trademark application by filing a request on form TM -16.
Vague specifications of goods or services
The trademark examiner could raise an objection over a large number of products and services mentioned in the application or to the fact that the list as stated is too vague to be considered. If such an objection is raised, the individual is required to file a request on TM-16 to correct the objection and list down the exact products for which the trademark is sought.
The individual could overcome an objection on the specification of goods or services through requesting to correct trademark application by filing a request on form TM -16.
Same or Similar Trademark Exists
The examiner can raise an objection if the trademark sought bears any resemblance or similarity towards something that already exists. The objection would be raised under section 11(1) of the Trade Marks Act as identical or similar marks regarding identical or similar description are there on record, and might thus create confusion amongst the masses. In such a case, the individual could justify their trademark by providing evidence of the same being different from already existing ones.
The individual could submit a reply to the trademark examination report by stating that trademarks quoted as conflicting marks in the examination report are different than the individual’s trademark, along with supporting evidence.
Trademark Lacks Distinctive Character
Trademarks which are not able towards distinguishing the products/services of one individual from those of another individual are devoid of distinctive character and therefore legally responsible for objection under absolute grounds for refusal of trademarks.
Towards overcoming a trademark objection for refusal, the applicant could submit proof towards showing that the mark has acquired a distinctive character by virtue of its prior usage.
Trademark is Deceptive
An Trademark objection could be raised by the Trademark Examiner if the mark has the potential for the deception of the public by reason of something inherent in the mark itself or in its usage, like nature, quality or geographical origin of the products or services. An objection as to deceptive trademark could be overcome if the individual seeks to exclude products or services from the specification by filing Form TM-16.
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Kamaljeet Kaur B.A. from University of Delhi