What is a Trademark Objection and How Can Innovators Respond?

A trademark objection occurs in the initial l stage of trademark registration and can be filed by examiners, registrars and third parties.

A trademark objection may be headed your way if you’re an innovator who has just filed for a trademark. Don’t fret; this is a fairly routine process. But before we get to exploring what a trademark objection is, let’s take a closer look at the form of IPR from which it draws its name. An important entity under the intellectual property rights umbrella, a trademark helps distinguish one brand from another. In the business world, a trademark serves as a brand identifier or a brand indicator. This mark of identification is what customers see when they choose the products and services of one brand over another. Trademarks help brands maintain their distinct identity. A trademark can be in the form of a logo, a design, or even an exact set of words that represent a brand and set it apart from another.

Some of the most famous examples of trademarks include – the colours red and yellow, and the arched ‘M’ used by fast-food brand McDonald’s; and an apple bitten on one side as represented by the tech brand Apple. Similarly, the slogan ‘Because you’re worth it’ makes you think of French cosmetics and skin-care brand L’Oréal. While these are brands that we now recognise easily, there is a chance that the brands’ owners had to undergo several objections while registering for their trademarks. If that was indeed the case, one may wonder how the brands still became the owners of these trademarks? This article explains what trademark objection is and how you can respond to it.

What is trademark objection?

The term trademark objection is generally used in the initial stage of the trademark registration process. Trademark examiners, registrars or third parties usually file the objection under Section 9, i.e. the Absolute Grounds of Refusal or Section 11, i.e. the Relative Ground of Refusal, of the Trademark Act of 1999. Trademark registrars or examiners can file – trademark objections if they deem an application incomplete or if they think that the applicant has not provided correct information. They – may also file – objections if their research shows the existence of similar trademarks. Apart from registrars and examiner, trademark objections may also be filed by third party individuals. Such individuals can file their objections upon seeing the mark published in trademark journals or before the trademark is registered. They must back their objection with adequate proof.

What is trademark objection reply?

Once a trademark objection is filed, the application status changes to ‘Opposed’. The examiner then notifies the applicant about the grounds for opposing the trademark registration. He then provides the applicant with the opportunity to defend the application. The applicant can use this opportunity to explain the applicability of the trademark – that is, how it fits the criteria to register the trademark and how the objection may be invalid. This process of explaining the validity and applicability of a trademark is regarded as a trademark objection reply.

How to respond to a trademark objection?

Once an objection is raised, the trademark status is marked as ‘Objected’ by the Indian Trademark Registry. As the applicant, you have to follow the below-mentioned steps to reply to a trademark objection.

1. Analyse the exact nature of the objectionWhen the examiner or registrar files a trademark objection, the applicant is notified of the same. As the applicant, you must file a counter statement to the trademark objection within two months of receiving the objection notice. For this, you must analyse and study the objection carefully.
2. File your response to the objection.
   You are now required to draft your trademark objection reply. You have to provide proper answers to the objection raised. You must understand the differences between conflicting marks as compared to your mark, and provide supporting evidence and documents to validate your response. Examples of evidence include an affidavit stating the use of the trademark on your website, social media platforms, advertisement channels, publicity material, etc. You must file the response draft online on the e-filing portal for trademarks.
3. Appear for the trademark hearing
   Once you’ve filed your response, the examiner or registrar decides the validity of the response. If the examiner accepts the response, your application is processed for registration and advertised in the Trademark Journal. In case the examiner seeks further clarification, you would be notified to attend a hearing in front of the Intellectual Property Appellate Board or IPAB.
4. Publication of the trademark in the Trademark Journal
   If the examiner is satisfied with your responses at the hearing, the mark is accepted and published in the Trademark Journal. However, if the examiner is not convinced, he has the discretion to pass a refusal order in the same journal. You can appeal the refusal order by filing a review petition, typically within 30 days, by mentioning the grounds for review.
5. Trademark registration
   Once the reply to trademark objection is filed, and the review is completed, your trademark is once again published in the Trademark Journal. Once again, it is open to scrutiny for four months. If there are no third-party objections during this time, you can proceed to register your trademark. You have to – repeat the above steps again in case of third-party objections.

Final word: The role of the Intellectual Property Appellate Board or IPAB is crucial in the process of filing trademarks and trademark objections. The IPAB determines a place and date to hear your case, depending on the jurisdiction under which your case falls, as per rule 2(m). Under Rule 2(m) the IPAB decides the case in front of the trademark holder and the objecting party. If either party is absent for the hearing, the IPAB can issue a ruling based on the merits of the case, give an ex parte order or dismiss the case. A trademark objection does not necessarily mean that your trademark claim will be denied directly; it merely means that you may have to provide the trademark registrar with valid explanations and reasons, supporting the trademark. So, if you are in the process of creating a brand logo or design, ensure you understand how to reply to trademark objections, while you file for trademark registration.