Trademark Objection

Reply to Trademark Objection within 5 Days

When the trade mark application is objected, it is stipulated that a response should be filed within one month from the date of receipt of the Examination Report. The Trade Mark Registry usually uploads the Examination Report in the online records without any intimation to the applicant or its agent. Therefore, it is desirable to submit the response within one month upon knowledge of the Examination Report being uploaded in the online records. In cases where the Examination Report is received from the Trade Mark Registry, it is important that the response is submitted within one month from the date of receipt of the examination report. Otherwise, the trade mark application will be abandoned by the Trade Mark Registry due to lack of prosecution. When the trade mark is objected to, it is imperative that effective arguments are put forth by submitting a suitable response to the examination report in order to overcome the objections. Once written submissions are made, the Registrar/Examiner either accepts the trademark or posts a hearing for allowing arguments to be put forth in person. In most cases, objections can be overcome if properly represented before the Registrar.

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The following procedures should be followed while applying Examination report

Day 1

1. Collection of basic Information
2. Consultation for grounds of objection raised by the examiner
3. Discussing the suitable responses to the examination report

Day 2 - 3

Drafting of response by Experienced Lawyers

Day 4 - 7

Filing of TM Objection Reply by online

Top Reasons for Trademark Objection

Here are some top reasons why a trademark would get objection:
Trademark applications can get objections under more than one grounds. Following are some grounds on which an examiner can object to the Trademark registration:

The grounds of refusal for Trademark registration can be divided into two parts :

Absolute grounds of refusal - refers to the incapability of marks to be distinctive or graphically presented

Relative grounds of refusal are always in connection with earlier trademarks and their related rights.

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Deceptive Marks

Any trademark that is likely to confuse the people because of something inherent in the mark itself or its use, like nature, quality, or geographical origin of the goods and services.
An objection as to deceptive trademark can be overcome by filing Form TM-16.

Lacks Distinctive Character

Trademarks that are not capable of differentiating between one person's goods and services from those of another are devoid of any distinctiveness and thus can get objection under absolute grounds for refusal of trademarks.

Existence of a similar trademark

If there are similar or same trademarks of different trademark owners on records regarding the same or similar description of goods or services, then an objection can be raised.

False or vague specification of goods

Suppose the specification of goods or services happens to be too vague or encompasses a large variety of goods or services. In that case, an objection can be raised as follows by the trademark registrar:
"The specification of goods/services mentioned in respect of class xx is very vague and wide. You should provide exact items in respect of which the trademark is sought to be registered by filing a request on form TM-16".

Incorrect address on trademark application

In case the trademark applicant has not mentioned the principal place of business correctly, or he has not mentioned the address for service in India. An objection can be raised as under:
"The Principal Place of business of the applicant should be brought on record by filing a request on form TM-16" or "The applicant's address for service in India should be brought on record by filing a request on form TM-16, since the applicant has no principal place of business in India."

Incorrect name of the applicant

The applicant must enter the name in the application correctly. In case of incorrect name on the trademark application, the examiner would object as follows:
"The application appears to have been filed in the name of a partnership firm, names of all Partners of the firm should be brought on record by filing a request form TM-16."

Incorrect trademark form

If the trademark application is not made on a proper form, an objection will be raised by the examiner as follows:
"The application is made on Form TM-1, for certification mark in respect of goods or services falling in a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16."

Apart from Trademark Objection, Mibook India also offers trademark registration in bangalore and Copyright Registration.