Trademark Objection
Trademark Registration Application undergoes the following steps:
- Trademark Search
- Filing of Trademark Application
- Trademark examination
- Publication in the Journal
- Registration of Trademark
As a part of the third Step, Trademark Examination of Form TM-A, if the examiner encounters any inconsistency in the Form, it may raise an objection under section 9 and Section 11 of the Trademark Act, 1999 as explained below:
- Section 9: This section provides for absolute grounds of refusal and the objection under this section is raised under the following cases:
- When the mark is not capable of distinguishing the goods or services of one person from those of another person;
Eg: Use general words such as “salt” in your mark.
When the mark consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services;
Eg: Use of the word “Delhi” in a trademark
When the mark consists exclusively of marks or indications which have become customary in the current language or in the bonafide and established practices of the trade.
Eg: Use of word “pizza”
- When it is of such nature as to deceive the public or cause confusion;
- If it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
- If it comprises or contains scandalous or obscene matter;
- If its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
- Section 11: This section provides relative grounds for refusal due to the following reasons:
- The mark is identical or similar to an earlier trademark and there exists a likelihood of confusion on the part of the public when the goods description for which the mark is intended to be used is the same;
Eg: the mark “Moffy” and “Moffie” in a readymade garments business
The mark is identical or similar to an earlier trademark and the goods description of the instant mark and the similar/identical mark is different but the latter one is a well-known mark in India.
Eg: the mark “Airtel” in the telecommunication business and “Airtel” in the footwear business.
Note that in case the objection is raised by the Trademark Department, the requisite reply must be filed within one month from the date of receipt of the examination report otherwise the application shall be abandoned. If the response to the report is filed within the aforesaid time, the same shall be duly considered and if the Registrar accepts the application for registration, he shall advertise the mark as accepted in the Trademark Journal but if the response to the report is not found satisfactory or where the applicant has requested for hearing, the Registrar shall provide an opportunity of being heard to the applicant.