What is trademark examination or trademark objection ?

After filing an application for trademark registration , you get Trademark receipt which specifies one number known as Trademark application number, which is used to track your trademark application various stages, the trademark officials specifically trademark examiners, analyse the application which is comprised of basically two types of examinations one is formal examination and other one is substantive examination, generally formal examination is related to basic checking of the Trademark application filed which is once cleared is marked as Formality check pass, after this stage, the trademark filed is marked for examination and if the trademark status shows as objected it is said to be substantially examined , this substantial examination is also known as Trademark objection or Examination report where your applied mark is duly searched by the Trademark examiner which may comprise of similarity search and also legal examination of your Trademark application in view of section 9. After conducting their search they write down their opinions about the mark, mainly point out the reasons why the applied mark shall not be registered. All these objections along with relevant trademark provisions are stated in Trademark Examination Report. These objections must be replied by the applicant within 1 month from the date of receipt of the examination report. This reply is generally known as trademark examination reply or Trademark objection reply

Examination Report

The Trademark Registry examines a trademark application within a period of three to six months to one year from the date of filing.
An Examination report is issued in case the Registry has some objection/s with the registration of the Trademark application filed, which may relate to the question of the trademarks distinctiveness, not meeting the qualifications under the act, existing similarity with prior existing trademark registrations, and filing of supporting documents.
If a mark is accepted during examination, the trademark office will issue an acceptance order and the trade mark will be published in the journal.
However, a trade mark is rarely accepted without objections. If registration of a trade mark is objected by the examiner in the examination report, applicant or his agent must respond to it within one month from the date of receiving the examination report. The trademark examination reply must include below stated point:
A well crafted Trademark objection reply ensures that mark may get accepted by the examiner without proceeding for hearing, Any trademark objection reply must focus on objections raised in view of mark applied and cited marks, the answer to objection raised must be specific , supported by relevant examples of like trademark cases and must also be supported by recent relevant Trademark caselaws which supports your point of arguments.
Below is the quick summary of what shall be the content of any Trademark objection reply or Examination report reply. 1) An answer to the objections raised, supported by legal prepositions, relevant sections of Trademark Act along with arguments crafted around the objections so raised
2) Relevant case laws or precedents of the trade mark office and
3) Supporting documents to prove inherent or acquired distinctiveness.
4) An affidavit of Usage along with supporting documents could also be filed along with the reply to the examination report which shows that the trademark has acquired distinctiveness and is being associated with the goods/services of the applicant due to its prolonged usage.

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Filing of a correct and specific reply is pertinent step to secure trademark registration in India.
In case, the objections are not being answered to the satisfaction of the trade mark office through the response submitted to them, the applicant can avail an opportunity of hearing before the Trademark Registrar, where he/she can present submissions orally. The hearing is generally conducted by the Assistant Registrar or Senior Examiners of Trade marks.

It is always advisable that applicant of the trademark hire an attorney for drafting a reply as they are better experienced with relevant trademark laws and caselaws that are pertinent to file the reply efficiently.

In case, an applicant or his/her agent satisfies the objections of the Trademark Office via response or hearing, the examiner or assistant registrar, whoever has heard the matter, orders the publication/advertisement of the Trademark in the Trademark Journal.

IMPORTANT UPDATE:

DEADLINE TO RESPOND THE TRADEMARK OBJECTION REPLY: All applicants shall know that prescribed limit to respond the Trademark objection reply is 1 month, However, due to COVID Pandemic even if your deadline is missed you have the opportunity for filing of the reply, however Trademark applicant’s are advised to finish this process timely.

Publication

Once a Trademark application is accepted or all objections are being removed, it gets published in the Trademark Journal.

What to do in case I have missed my trademark examination reply deadline?

Your deadline is calculated from actual receipt of the examination report. Hence in case the report, for example was issued on 12 December 2019 but is dispatched and received on 17 March 2020. The deadline to file the objection reply will be 17 April 2020 that is the 1 month from the date of receipt of the report.

How to know if your Trademark is objected or not ?

Learn how to check your trademark objection online and how to download the examination report.

When you can expect trademark objection ?

Once your application is filed , now a days trademark applications are getting objected within 2-3 months. Hence, one must check their application regularly. For checking your application status you may visit the above link. What if my application is filed by someone else and now I want to change the attorney, will that be a problem? No, you may change attorney on record anytime, you just need to issue new Power of attorney.

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Trademark Objection - January 2018 Update Whats New ?

A new notification has been released by Trademark Registry of 22 January, wherein the registry has clearly list down around a lakh of Trademark applications that require urgent attention, the listed applications inclusive of other applications have been given a final warning regarding the submission of trademark objection reply. These applications are now required to file the reply on before 22 February 2018.

In case any of the Trademark application left unattended and the reply has not been filed the application will be abandoned without any further communication. Now, the Trademark registry has improvised its structure and working mode, and slowly they are not pardoning any kind of delay, be it the filing of Trademark objection reply or Formality check fail.

Each of the Trademark application now requires a special attention and any mismanagement with respect of deadline of filing of replies, TM-M, official communication is not accepted and applications are directly abandoned. It is now a perquisite for any Trademark owner to time to time follow the application status and be responsive to any change in status.

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Frequently Asked Questions ?

Q. What is trademark?
A. Trademark can be anything like a logo, symbol, words, etc. which distinguishes us from other businesses and also gains goodwill.
Q. How to know my Trademark Objection reply is filed or not?
A. It is easy to check whether your Trademark objection reply is filed or not, once you go and check your Trademark status online on ipindia website, you will notice an Alert: Awaiting reply – just below the status objected, in this case your reply is not yet filed and is pending to be filed. In case you see your Trademark status as objected but there is no alert : awaiting reply or there is just an alert : Ready for show cause hearing, in both the case it means reply is filed and application is now pending for further action.
Q. My Trademark Examination reply was filed but status is still objected?
A. There is nothing to worry, even after filing of trademark objection reply, the status may remain objected as any change in status will only occur at will of the Examiner reviewing your Trademark objection reply filed. It may take time for status change which may happen anywhere between 15 days to even months, depending on Examiner.
Q. When a trademark gets objected?
A. The reason for the objection can be many either regarding the documents filed or regarding the fulfilment of criteria mandated by the statue and rules.
Q. What is difference between trademark objected and trademark opposed?
A. The Trademark objected will be done by the examiner by questioning on the essential criteria for the registration and the opposed will be done by the third party on the credibility of the trademark.
Q. What are the grounds available for objection?
A. The objection can be made with respect to the trademark statue and rules, which expressly restrains the registration of the trademark on basis of two ground absolute and relative grounds.
Q. What are the benefits arising out by registering a trademark?
A. The major benefits of a registered trademark, it gives an exclusive right to the person or company registered to use for the goods and services. The trademark distinguishes the business from others, which leads to gain reputation, identity, and results in gaining goodwill for the company. Above all it imposes restrictions on others from not using the mark in case it is still used it can lead to infringement on the other party, for that the person who registered can sue the other party and get compensation for such infringement.
Q. What is meant by trademark ‘objected’?
A. During the process of registration the examiner should satisfy with the trademark which means the mark should be compelled with all criteria and rules for registration, in case the examiner feels unsatisfied with the trademark he may object the it. He will intimate to the applicant and the applicant need to respond within thirty days and such reply need to satisfy the examiner, on failing to reply the application will be abandoned and failing to satisfy the examiner may reject the application. Hence, reply should be crafted by an expert of trademark and Legal.
Q. What is meant by trademark ‘opposed’?
A. In case the trademark resembles or infringes any existing trademark or any other reason it might cause damages, in such cases the aggrieved party may file an objection to the examiner and the examiner may solve the issue based upon the parties statements and evidences. When the objection arose the examiner will inform to the applicant and he need to reply within sixty days on failing to do so the applicant will deem to be abandoned.
Q. What are the related grounds available for objection?
A. The Relative grounds were expressed in s.11 of the act, which expresses that if the trademark which can cause confusion to the public because it is similar or identical to another trademark. In case the trademark which may violate the law of passing off or copyright can be restricted and objected. In case the trademark resembles the trademark which is registered under conventional application on which India is a party to the treaty, can be objected.
Q. What are the absolute grounds available for objection?
A. The absolute grounds were expressed in s.9 of Trademark act, 1999, which expresses in case the proposed trademark fails in the distinctive nature i.e. on failure to distinguish the trademark from other person trademark or business. The Proposed trademark which consists of any exclusive mark or identification which served in trade of goods or services like quantity, geographical origin etc. can be objected. The trademark shouldn’t consists of any marks or identifications which are in customary practices. If the trademark is about to cause confusion to the public or to hurt the religious feelings or having anything prohibited by law or having obscene matters or consist of shapes expresses the nature of goods or technical results or value will be objected by the trademark officer.
Q. What should be done when the trademark is objected?
A. Once the objection was made by the trademark officer, the applicant needs to respond in a month, on failing lead to rejection of the application. And the response should satisfy the officer in failure to do so, results the same. Once the response satisfied the officer, he will order for the publication of the trademark in the journal and it is subjected to welcome opposition by the third party which should be done within 4 month of such publishing. On passing of 4 months without any opposition the trademark will be registration and certificate of registration will be issued. Always make sure to file your Objection with the help of an expert else all your investment in your mark will go in vain which have happened with many businesses.
Q. What will happen if the response fails to satisfy the trademark officer?
A. The response should satisfy the officer on failing to do so, the application will be rejected.
Q. What can be done further if the application is rejected?
A. On rejection can approach the Intellectual property appellate board.
Q. I filed Trademark objection reply, now it’s under alert, what does it mean?
A. This means that now your Trademark application is marked for Trademark hearing, you are required to wait for issuance of trademark hearing notice.
Q. My Trademark Examination report has objection related to Goods and classification change and examiner has asked to file TM-M what can I do?
A. TM-M for is required when you make mistakes related to formal requirements pertaining to Trademark application filed, TM-M form is basically required to be filed in order to change, correct or amend any mistake in Trademark application filed.
Q. Is there any Govt fees applicable for filing of TM-M?
A. Yes, Rs 900 is applicable for filing of TM-M for purpose of any correction or amendment in Trademark application.

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