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We all are aware about trademark registration process in India. We know that once the application is filed it will be formally examined by the examiner. Once your application is marked for examination it means that your application will soon be examined and the examiner will issue its objections.
As and when these objections are issued the status of your trademark application changes to objected. Now you may download the examination report issued and prepare your response in accordance to the objections raised by the examiner in the examination report issued.
Before proceeding to reply construction for the examination report issued, we must understand what all types of objections are generally raised by the examiner in relation to any trademark application.
Classification of types of Trademark Objections
2. Substantive objections
Now, let us understand what it means by formal objections. These objections are generally cited when your trademark application has technical faults such as there is a mistake in country name, trade description is wrong or it is not written in accordance to nice classification.
You missed out to mention the applicant type or Trade name or missing translation or transliteration in case of logo or device mark.
These types of objections may also result in formalities check fail but in case you rectify the same the application may proceed in same manner. Now in case you receive such objections in first examination report there are chances that you might get a second examination report once you correct these objections by way of filing TM-16(to be submitted along with applicable fees).
In the second examination report you may get substantive objections that are based on Trademark Act 1999 and rules.
Grounds of Trademark Objection
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Based on similarity with existing trademarks on record.
Based on being descriptive in nature, making a direct reference to goods and services, kind, quality geographical location etc.
Apart from the above mentioned objections some objections may also include restrictions over applicability, usage, association of the trademark applied.
In case you receive any of the above mentioned substantive objections, with respect to objection raised on similarity between your applied mark and cited marks in examination report, you have to distinguish your trademark from the trademarks cited by the examiner; you may do so by citing the difference in their phonetic, visual, aural and pronunciation differences.
In case you receive objection based on descriptive nature, you have to emphasis on the fact that how your mark in a unique and coined word and how it is not describing the primary function or any associated quality with your goods and services associated with your applied trademark.
In case you receive the objections in relation to any restriction condition, you have to decide whether or not you accept such condition in relation to the mark and accordingly you have to proceed with the reply.