After filing the trademark application with all formalities in order, the trademark application is examined. During trademark examination, the trademark examiner scrutinizes the filed trademark application. The examiner ensures that the “applied trademark” meets all the predefined criteria set by the Trademark Act and Trademark rules. Further, trademark examiner ensures that the trademark does not infringe any existing and registered Trademark.
If the trademark examiner finds any discrepancy in the “applied trademark”, he issues a Trademark examination report to the Applicant/Proprietor. The trademark examination report particularly cities similar or conflicting marks and grounds for refusal. The applicant has to respond to the examination report within the stipulated time. The stipulated time is 30 days from the date of issue of the examination report. The applicant has to submit a response for the objections listed in the Trademark examination report. While responding, the applicant has to provide substantive reasoning as to how the proposed mark is unique and is not confusingly similar to the cited marks. Based on the response submitted by the applicant the examiner may either accept the response or may schedule a hearing.
If the applicant fails to respond to the Trademark examination report within 1 month. The trademark application is considered “deemed to have been abandoned” by the Applicant.
GROUNDS OF REFUSAL
Under the Trade Marks Act, 1999, there are certain circumstances under which the registration of a landmark has been refused. The specified grounds are absolute grounds and relative grounds for refusal of a registration of trademark.
Types of Trademark Objections
1. Procedural objections – It includes objections like POA not filed, the mark applied in wrong class goods/service not falling and alike.
2.Substantive objection- It includes objections based on Absolute grounds and relative grounds. Absolute grounds refuse the registration absolutely. And, relative grounds are only provoked when a new trademark comes into conflict with a similar, already existing trademark.
Relevant Sections of Trademark Act for refusal of registration
Sections 9 – Absolute grounds for refusal of registration
Objections dealing with the absolute grounds of refusal include lack of distinctiveness, marks exclusively designate the characteristics of the product. Characteristics of the product shall include quality, purpose, geographical origin, and alike characteristics. Distinctiveness can be classified into two groups- Inherent and Acquired.
Under the Trade and Merchandise Marks Act 1958, a trademark is only registerable if it is distinctive/ capable of distinguishing. It also acknowledges that a trademark can acquire distinctiveness with its continued use in the market. For example. Even an ordinary word can acquire distinctiveness with its extensive use.
Case Study: In Pidilite Industries Ltd. V Jubilant Agri & Consumer Products Limited. The Court held that the word ‘Marine’ had acquired distinctiveness after its popular use as a waterproof adhesive in the market for 9 years. A domain name is also permissible to be trademarked subject to the provisions of section 9(1) (a). The parameters for testing distinctiveness are extent and period of use, goodwill and association in the minds of consumers, investments on advertisements, recognition in trade circles and channels of distribution and the relevant class of customers.
Trademarks cannot be registered in cases where they consist of indications or terms used in trade to describe the kind, quality, quantity, intended purpose, values, geographical origin or the time of production or other characteristics of the good/service. The name of a good/service rendered and even words indicating the size of the commodity eg. Words such as medium, large, extra small all fall under the description (kind) of the commodity and cannot be protected by trademark. Any word used to describe the quality of a product is not registerable example: ‘good’, ‘bad’, ‘best’, etc.
Certain words which are commonly used in one field may not be registerable in that field but may be allowed in another. For example; the term ‘high tech’ cannot be registered as a trademark in relation to technological sectors but may be accepted as food product.
Words that are used to refer to the use or consequences of using the product cannot be trademarked. Numerals with respect to the quantity of the product also cannot be trademarked. Words or indications which are used to indicate the worth or importance of the product are not registerable for example; 24 karat gold.
Under section 9(1) (c), trademarks that exclusively consist of indications or terms that have become customary in the current language or in the bona fide and established practices of trade are barred from registration. This has been done to prevent the monopolization of commonly used terms in a trade.
How to overcome the objections on absolute grounds under Section 9?
To circumvent this objection the applicant must emphasize on how the trademark is a coined word and is not derived from the dictionary. Further, emphasise on other possible defences that indicate towards the distinctive meaning and identity applied to the goods/service in question. If a personal name or surname is used. Then the applicant can focus on how the aforementioned name has accrued goodwill and distinctive identity, separate from other goods/services in the market.
Sections 11 – Relative grounds for refusal of registration
Under Section 11, the relative grounds for refusal of a trademark have been established. A trademark cannot be registered if
- the mark causes likelihood of confusion on part of the public i.e. likelihood of association with the earlier trademark;
- the mark is identical to a well-known trademark in India, use of the later mark may be detrimental to the distinctive character of the well-known trademark;
- the mark’s use in India is liable to be prevented by law of passing off or copyright law.
In Amritdhara Pharmacy v. Satya Deo Gupta the word ‘Lakshmandhara’ for medicinal registration was refused registration as a trademark because it caused confusion to the public with its close similarity to registered trademark “Amritdhara”. In BDH Industries Ltd. V. Croydon Chemical Works Pvt. Ltd., the Court made the following points of contention with respect to similarity: i) it has to be considered from the point of view of a man of average intelligence and imperfect collection ii) it has to be considered as a whole iii). His impression must be taken into consideration. A trademark cannot be registered if it is similar or identical to a well-known trademark example; ROLEX , FORD, ICICI, TATA. However, reputation itself cannot determine whether a trademark can be classified as a well- known mark. The reputation of a trademark can be restricted to a particular territory, subset of the population. A trademark that has been registered in good faith or where the right has been acquired through use before the commencement of the Act, remains valid even if it is identical or similar to well- known trademark.
How to overcome the objections on relative grounds?
In order to overcome this objection, the applicant must analyze and highlight the existing differences in both trademarks. Further, the applicant must emphasise on the importance of the overall impression, be it the visual representation, sound, smell, etc. The applicant may stress upon the different markets, target audience demonstrating that such registration will not cause any confusion among consumers.
Thus, the response of the examination report is supplemented with the following documents:
- Reply to the objections
- Relevant case laws or precedents to support the “applied mark” and
- Supporting documents to prove distinctiveness
- an affidavit of usage along with date of first use(if applicable)
If the “applied trademark” does not violate any objections and meets the benchmark laid down. Then the trade examiner accepts the application. The trademark examiner passes an acceptance order and the “applied trademark” is subsequently published in the Trademark Journal. The “applied trademark” shall be ordered to be advertised before acceptance (ABA) or accepted and advertised (AAA).
Preparing Response for the Objection
IPR Studio have trademark attorneys having extensive experience in tackling trademark objections. The Trademark attorneys will prepare a sharp and proper response to overcome the Objections.
Turnaround Time- 2-4 days