This article has been written by Nihal Raj and the article has been edited by Khushi Sharma (Trainee Associate, Blog iPleaders).
Trademarks refer to a recognizable phrase, word, or symbol that denotes a specific product and legally differentiates it from all other products of its kind. A trademark is a significant intellectual property that is used by companies to distinguish its brand from the competitor’s in the market. Trademarks are used to identify and protect words and design elements of a product or service. It can be a logo, slogan or even the name of the product. Trademarks in India are governed by the Trade Marks Act 1999, which lays down various provisions that explain the procedure and the steps involved in getting a trademark registered. The grant or rejection of trademarks is done by the Registrar of trademarks. In the journey of getting trademarks registered an applicant can come across two hurdles i.e.; a) Objections b) Oppositions.
Trademark objections are the ones that an applicant faces at the very initial stages of the registration process. Objections are raised by the registrar at the time of examining the application. The Registrar examines the application and identifies grounds of refusal under Section 9 and Section 11 of the Trademarks Act. Now let’s discuss how to handle or evade objections raised under Section 9 and Section 11 of the Act.
Section 9 Objections: Section 9 are considered to be absolute grounds of refusal, meaning a mark cannot be granted if an objection arises under this section.
- Devoid of Distinctive character: According to this objection an applicant’s mark is incapable of being distinguished from another person’s mark. In such cases, it is advisable to come up with abstract and unconventional names or designs that make your mark stand out. An applicant can go through the journals of Trademarks to study various trademarks that have been accepted and understand what makes those trademarks different from the others.
- Indications of Trade, Kind, Quality, Quantity of Goods or Services and so on: This objection clearly states that an applicant’s mark should not reflect the characteristics of goods or services produced or rendered respectively. It should not reflect any detail pertaining to the goods or services. Example: An applicant wanted to register his mark ‘GLOSTRAWZ’ engaged in manufacturing drinking straws that glow in the dark. This application would receive an objection under Section 9 as the mark indicates the nature and type of goods manufactured. At the time of applying for a mark, one must keep in mind that the mark should not reflect any attributes or traits pertaining to the product or service, by doing so one can evade this objection.
- Customary Indications: An applicant’s mark should not be or contain anything which is considered to be customary in nature or something used in the current language. In this sense, an applicant should avoid words or sentences used in daily communication or for that matter in trade.
- Causing Confusion: An applicant’s mark should clearly reflect his product or service and should not confuse the customers with the products and services that are being offered in the market.
- Religious Susceptibilities: An applicant’s mark should not offend any religion. An applicant should try to avoid symbols or pictures that associate with any of the religions practised by society.
- Scandalous and Obscene matter: An applicant’s mark should not have any obscene content that might be against morality and law which might cause public outrage in the society.
- Emblems and Names Act 1950: An applicant’s mark should not violate any provisions under the Emblems and Names Act 1950. Ex: An applicant cannot sell his goods or render services under the national emblem of India.
Section 11 Objections: Section 11 Objections are considered as relative grounds of refusal, under which the main ground for refusal is that the applicant’s mark is very much similar to a registered mark dealing with similar goods and services. Section 11 Objections are not absolute in nature. In case the registrar points out that the mark is similar to the one that has already attained the status of registered, then the onus is on the applicant to show that their marks vary in nature, appearance and the goods or services dealt in. Once the registrar is satisfied that the mark is different from the ones that already exist, the mark is accepted and advertised.
There are a few ways where one can establish that his mark is different from the ones that already exist in the market.
- Establish a certain amount of goodwill.
- Try and prove there is a secondary meaning to Trademark.
- Establish any colour difference.
- Read your mark in its entirety.
- Claim usage over a period of time.
- Prove distinctiveness of the mark, by difference in shape or device.
It must be noted that a reply to the Objections raised by the Registrar must be made within 30 days from the receipt Examination Report. Failure to do so will result in the abandonment of the trademark.
What are oppositions?
Once the trademark has been accepted and advertised, the Trademark Office will provide an opportunity to the third party to oppose the trademark. Section 21 of the Act states that any person can file an opposition against a trademark that has been accepted and advertised. It can be filed within 4 months from the date of acceptance of the trademark. The person filing for an opposition is called an Opponent, he will try to establish that the mark in dispute is very much similar to his registered mark and shall request for the removal of such mark.
Filing a Notice of Opposition
When it comes to filing a Notice of Opposition through a TM-O application at the time when an individual feels that an applicant has filed for a trademark similar to his, there are certain things that he should incorporate to establish his Opposition.
- After filling in the basic details with respect to the Opponent’s mark and the details of his agent who shall represent the Opponent along with the details of the applicant against whom this Opposition is filed, he can begin talking about the history of the mark. It is always advisable to blow your trumpet at the beginning of the Notice. The Opponent can mention the goodwill of the company and the reputation built over the years in the market.
The Opponent can talk about the history and nature of the company and mention the products it deals in. He can provide numbers with respect to the units sold or provide information about his customer base in the society by providing testimonials. He can provide information about the promotional activities performed to advertise and market the product. The Opponent can show any website created for his company if there is any and also show the number of views and hits his website gets.
The Opponent can provide information about prior adoption of the mark, by giving details about the mark such as the application number, date of application and class. He can also provide details with respect to the mark being registered in more than one class and specify the list of classes the mark is registered in.
The Opponent can also provide information about any previous cases pertaining to the mark where the court had ruled in its favour, thereby proving that the mark was first adopted by the Opponent.
- Once the Opponent has established the history and goodwill of the company as much as he can. The Opponent can begin explaining the reasons behind filing this notice of opposition. The Opponent can explain how the mark of the applicant can cause confusion among the public and highlight the ulterior motive of the applicant to ride on the reputation of the Opponent built over the years. He can go on to explain the similarities between the two marks and also emphasise the damage that is caused because the mark is deceptively similar to that of the Opponent’s.
Then the Opponent can move on to the law and elaborate on the violations of the provisions of Trade Marks Act 1999 and any other law in force, if needed he can substantiate this point by citing a few case laws.
It must be noted it is quintessential to submit a Rule 45 affidavit that includes all the evidence to support the reasons and grounds stated in the Notice of Opposition, this will help the Opponent to establish a strong case against the applicant.
On receiving a Notice of Opposition (TM-O Application), the applicant shall file for a Counterstatement through a TM-O application. A Counterstatement is very much similar to an Opposition with few minor changes. A Counterstatement has to be filed within 2 months of receipt of notice of Opposition. An applicant while filing for a Counterstatement can bring up the following points:
i) Reasons for refusing Opposition Statements.
ii) Claim harassment by the Opponent.
iii) Claim that the Opponent is misusing the law to impede the trademark process of the applicant.
iv) Applicant can show that he had no such intention to register a mark similar to that of the Opponent’s and leverage over the reputation built by the Opponent.
v) Highlight the differences between the marks in detail.
vi) An applicant can attach an investigation report created after investigating the Opponent and the goods and services rendered by him.
vii) Substantiate with reasons for no violation of Section 9 and Section 11 of the Act and support with case laws.
viii) Follow it up with a verification page and annexures that are notarised and attested.
The Applicant supporting his Counterstatement should also submit a Rule 46 affidavit. Rule 46 affidavit basically contains all the evidence and proofs which shall go on to corroborate the reasons stated in the Counterstatement application. It must be noted that it is quintessential to attach Rule 46 affidavit with the application in order to defend the trademark from being successfully opposed by the Opponent.
When it comes to dealing with Oppositions, there are 4 kinds, one must be clear about the nature of Opposition and act accordingly.
- Legitimate Opposition: This is just an ordinary opposition where the Opponent has clearly justified his stance against the applicant’s mark and has substantiated his reasons with evidence.
- Mischievous Opposition: Mischievous opposition reflects the ill intention of the Opponent, where he has no case against the applicant but he raised an Opposition just to hinder the registration process of the applicant. In such cases it is advisable not to wait for the last day to file a counterstatement and also in cases like these if the Opponent has failed to attach a Rule 45 affidavit with the Notice of Opposition, the applicant can request the registry to dismiss the opposition immediately.
- Clarification based Opposition: Some oppositions are not offensive in nature but they are filed only to seek clarification from the applicant. In such cases, it is advisable not to rush in and file a counterstatement. It is better to have a dialogue exchange with the Opponent and settle the matter. These matters can also be arbitrated, negotiated or mediated.
- No head or tail: These kinds of opposition have no proper format, but have a legitimate case against the applicant. It is important to read it carefully, understand the grounds of Opposition and then act accordingly.
Trademarks as a concept to an extent also deal with psychology, because logos, shapes and pictures are easily registered in our minds. Mcdonalds a worldwide food chain, can easily be recognised by a big letter ‘M’, which is the principle followed at the Trademark Office for granting or refusing trademarks. The Registrar examines an application keeping a layman in mind, whether a layman would be in a position to differentiate between the two similar marks.
In case an applicant’s trademark is similar to the one that already exists in the market, he should be able to establish that a layman would be in a position to tell the difference between his mark from the others. Be it at the time of Objection or Opposition or replying to an Opposition, an applicant should be able to distinguish his mark from that of the other person’s mark and corroborate his reasoning with enough evidence to claim ownership over the mark.
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