This article is written by Vaishnavi Shrivastava who is pursuing a Certificate Course in Trademark Licensing, Prosecution and Litigation from Lawsikho.

Introduction

According to the World Intellectual Property Organization (WIPO), a trademark is a sign capable of distinguishing the goods or services of one enterprise from those of others. Apple, Windows, Jio, Zara, Dell, UrbanClap are some of the famous trademarks that have their own identity and have secured a distinctive place in their respected market. The sole purpose of a trademark is to ensure that the consumers can identify goods and services just by looking at the name or logo of the enterprise. 

Who may apply for trademarks? 

Any person, group of people or a legal entity like a company or LLP aiming to give their business a distinctive identity can apply for a trademark. Having a registered trademark indicates that the goods/services have a particular quality to them which makes them different from the other options available in the market. Any person as specified under Section 18(1) of the Trademark Act,1999 can apply for a trademark by submitting an application in the office of the Trade Marks Registry with the help of a lawyer or a trademark agent.

Trademark objection

Trademark objection is the first obstacle a lawyer or a trademark agent faces when applying for the registration. Trademark objection is an objection raised by the examiner of the trademark registry office to the applicant stating that the trademark in question has legal impediments and thus cannot be registered as a trademark. This is a common procedure followed by many countries when they find a trademark to be deceptive/similar/descriptive in nature to that of an already existing trademark.  

Constituents of trademark objection

All trademark objection constitutes of a document in a form of a report, clearly specifying the legal impediments present in the application. The examiner conducts a trademark search for identifying any conflicting marks to ensure that the trademark in question if approved, would not infringe any already existing trademark in the country.  

In addition to that, the examiner also ensures that the application has been filed in the manner as prescribed under the law. For example, if the trademark office has called for the attachment of a particular document then the applicant shall submit the same. Failure to do so would attract objection from the examiner.  

Trademark objection in India: Examination Report

According to the latest annual report (2017-2018) of trademarks by IP India, there was over 2,72,974 application received by the Registration office all over India. The total number of Registered Trade Marks as of 31st March, 2 018 was 14,02,434 thus, making it quite common for a trademark agent or lawyer to receive a trademark objection.   

To register a trademark, one has to follow multiple steps as prescribed under the Trademark Act, 1999, and Trademark Rules 2017. All application of trademark registration is filed in the appropriate trademark registration office which has the jurisdiction to do so. For example, if an applicant is living in Mumbai, the jurisdiction would vest in the trademark office of Mumbai. Once the entry of an application is made, it is allotted to an examiner for the examination of the application under the provisions of the Trademarks Act & Rules.

The examiner looks at the application in detail and inspects the application as to whether:

• The application has been filed in accordance with the Trademarks Rule 2017.
• The trademark applied for registration can be refused for registration on grounds of Absolute and/or Relative grounds as prescribed under Section 9 and 11 of the Trademarks Act, 1999, if yes, the reasons; and 
• Any restriction, condition, or limitation that is required to be imposed; in case the application is accepted for registration.

An Examination Report is issued by the examiner if the application doesn’t fulfil any of the aforementioned requisites. If the application satisfies all the requirements, then the registry issues an acceptance order and publish it in the journal for opposition by a third party. It takes about 4 to 6 months for the registry to issue an Examination Report, thus it is advisable to check the status of the application every 15-20 days.  

Trademark objection in the U.S (Office Action)

Registration of a trademark is carried out by the “United States Patent and Trade Marks Office”. Trademark objection also known as ‘Office Actions’ in the U.S has the same characteristics that of a trademark objection in India. It is an official letter that states various legal impediments in the trademark and its application and directs the applicant to justify those issues in order to continue with the registration of the trademark. Just like India, it can take a few months before such objection is raised.  

Trademark objection in U.K (Examination Report)

The trademark process in the U.K is very similar to that of India. Registration of a trademark in the United Kingdom is carried out by the Intellectual Property Office. An application is usually made online, however, there is an availability of offline forms. While it can take four to six months for the registry to issue an examination report in India, in the United Kingdom, an examination report is issued within 20 to 30 working days, making the trademark procedure faster than India.   

Response to an examination report

Upon receiving the objection report, the applicant must file a reply to the same within the stipulated time i.e one month from the date of the issuance of the examination report. The response should be explained separately by addressing each and every objection that was raised by the examiner.  

The reply shall be submitted by email by attaching a scanned copy in PDF format to [email protected]. The reply can also be submitted in person or by post to the relevant trademark office. In case the applicant fails to file a reply within the prescribed time, it would lead to the abandonment of the trademark by the Registry. 

How to draft the response to an Examination Report

There is no uniform format of drafting a response to an examination report, however, the draft must include the following:

• A brief synopsis or introduction of the case that states the timeline to date; 
• Pointwise response to the objections raised by the examiner;
• Relevant case laws and precedents;
• Supporting documents to prove the distinctiveness of the mark;
• An Affidavit of usage (if applicable).

Responding to Section 9 objection

The prominent reason for raising a trademark objection under Section 9 is when the examier considers the trademark to be descriptive of goods/services indicating the quality, nature, or origin of the same. For example, using the name “Best Computers” for a computer shop is said to be descriptive of the goods indicating the quality of the same, thus would attract objection under this section.  

To overcome this objection, the applicant can include the following in his reply to the examination report:

1. Distinctiveness of the mark: the applicant can explain how his mark is not descriptive of the goods or services for which he had applied for registration. The applicant must explain the fact that his mark is distinctive and thus, qualifies for registration by providing relevant facts.  
2. Arbitrary mark: The Applicant must establish that the mark is arbitrary, having no meaning and connection to the nature and character of the goods/services.  
3. Prior use: if applicable, the applicant can also include the fact that his mark has acquired distinctiveness as he has been using the mark even before applying for registration. To support this argument, the applicant shall file an affidavit containing all the evidence of the extensive use of his mark along with relevant documents as proof.  

Responding to Section 11 objection 

The prominent reason for raising a trademark objection under Section 11 is when the examiner is of the view that a similar or identical trademark has been already registered or applied before the registry of Trade Marks by some third party. For example, using the name “FOOGLE” for an internet search engine or any other purpose would attract objection under this section. 

While responding to section 11 objection, one must address all the cited marks separately. Section 11 objection may be waived if the applicant establishes the following factors:

1. Degree of similarity: one must always compare the cited mark/s and include arguments that justify non-similarity between the cited mark/s and his mark. 
2. Difference between the goods/services: one must do basic research of the cited mark/s to see the goods and services that are offered under the cited mark. It so may happen that the registry objects the registration of a mark by citing a mark that provides a completely different set of goods/services than that of the applicant.
3. Status of the cited marks: one must check the status of the cited marks. It may happen that the registry objects the registration of a mark by citing a mark that is abandoned, refused, or cancelled. 
4. Prior use: in case the applicant has been using the mark even before the registration of the cited mark(s) he shall claim prior usership. 

Responding to objections pertaining to a formal requirement/s 

 In case of a clerical error where the applicant forgets to attach any relevant document along with the registration application, the Applicant must compulsorily fulfil the requirements as these requirements are laid down in the statute and are required by the office. 

For instance, if the trade mark office has called for the attachment of Form TM-48, the applicant must submit the same with relevant documents.

Responding to objections pertaining to incorrect classification   

The registrar may object the mark if the class of goods and services mentioned in the application is incorrect. While responding to the objection asserting that none of the goods or services mentioned in the application fall in the correct trademark class, the applicant shall file a request to rectify the class of goods and services as per the classification published by the Registrar.

In case the objection asserts that some goods and/or services provided in the application do not fall in the class, the applicant may file a request for amendment of the application by deleting items that do not fall in the relevant class.

Key points to keep in mind while drafting the response

If the examination report has any or all of the objections stated above, one must keep in mind the following key points when drafting and filing a reply:  

1. Be comprehensive  

While drafting a response to section 9 or 11 objection, simply stating that the trade mark applied is distinct and is phonetically and visually different from the citied marks is not considered ideal. One must state their arguments as to why the objected trade mark should be registered by providing relevant evidences. It is important to be descriptive and comprehensive so as to convince the examiner that the objected trade mark is distinctive and is capable of registration. Using blunt single phrase replies to an examination report is never entertained by the Registry and often lead to refusal of marks.

2. Include Case laws 

To further support the response, one must cite relevant case laws and precedents of the trade marks office, the Intellectual Property Appellate Board, High Court or the Hon’ble Supreme Court of India.  

3. Be Adequate & Consistent

One must draft the response adequately and must be consistent throughout. Focusing on all small details over the objections raised during the process of examination would result in an effective draft. 

Strategies to avoid trademark objections

Trademark objections are common but can be avoided by keeping in mind the following points: 

1. Trademark search: before applying for a trademark, the applicant or the applicant’s attorney must conduct a thorough trademark search to ensure that there are no marks that are identical or similar to the mark for which the registration is sought. 
2. Fanciful/Arbitrary names: in order to avoid a trademark objection, avoid using common names for the trademark. Create a unique mark or an arbitrary mark. An arbitrary mark is the one that has no meaning. For example, ‘GOOGLE’ is a new/unique word that was coined by the proprietor for his course of business. 
3. Non descriptive names: one should always avoid using descriptive names for their trade of business. A word that describes the nature of the goods or services is called a descriptive word. For example, using the name ‘Bakery’ for a bakery shop is descriptive and hence, would attract section 9 objection from the trademark registry.  
4. Combination of well-known marks: one should avoid using words that are in a combination of well-known marks such as ‘JIO Sweater’ or ‘BMW Bakery’ as JIO and BMW are famous and well-known marks. Using such famous marks/names would attract trademark objection as well as opposition that may cause the removal of the trademark in the future.   
5. Clerical errors: lastly, while applying, one must check the application for any clerical errors. One must ensure that all the information provided in the application is true and correct regarding the relevant class in which the goods and services fall for which registration is sought.  

Conclusion

As there are lakhs of registered trademarks in India, it is common to receive a trademark objection from the Registry. One must file a reply to the examination report within one month after receiving the reply from the Trade Marks Registry as any further delay may lead to the abandonment of the applied mark. One must ensure to keep in mind the above-mentioned points while drafting a reply to overcome the objections.    

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