Top 8 Reasons for Trademark Objections and How to Overcome Them

Updated on : Feb. 17, 2023 - 5 p.m. 17 min read.

What is Trademark Objection?

A trademark objection is a formal complaint made by a government agency or another party to the registration of a trademark.

The objection may be raised during the examination of a trademark application or after the registration of the trademark. The objection typically states that the proposed or registered trademark is too similar to an existing trademark and thus the registration of the new trademark would cause confusion among consumers or dilute the existing trademark's distinctiveness.

The party raising the objection must provide evidence in support of their claim and the applicant must respond to the objection by providing evidence in refute of the claim or making amendments to the trademark application. The final decision on whether to register the trademark is made by the trademark office.

Reasons for Trademark Objection

Incorrect Trademark Applicant Name

The Trademark Applicant Name is an important aspect of a trademark application. If the name of the applicant on the trademark application does not match the legal documents provided such as the PAN card or the Incorporation Certificate the trademark application may be objected by the Trademark Examiner. This is because the name of the applicant must be accurate and in line with the legal documents to ensure that the applicant has the legal right to use and register the trademark.

Incorrect Address on Trademark Application

When a trademark application is filed, the applicant is required to provide a correct and current address for correspondence. This address is used by the Trademark Office to communicate with the applicant regarding the status of their application, any objections, or requests for additional information. If the address provided on the application is incorrect or not up-to-date, the Trademark Office may object to the application.

Use of Incorrect Trademark Form

In India, the Trademark Office provides several forms for different trademark-related procedures. Each form has a specific purpose and requirements. If the wrong form is used, the trademark application may not meet the necessary requirements and can be rejected. In such cases, the Trademark Office may raise an objection, pointing out the use of the incorrect form.

Failure to File Trademark Form TM-48

TM-48 is a power of attorney form in India that is required to be filed along with the trademark application. It authorizes an agent or attorney to act on behalf of the applicant in the trademark registration process.

If the applicant fails to file the TM-48 form, the trademark office may object to the application. This is because the trademark office requires a formal authorization from the applicant in order to correspond with an agent or attorney in regards to the trademark application. Without the proper authorization, the trademark office may be unable to process the application and may therefore raise an objection.

Improper Classification of Goods or Services

Classification of goods and services is an important aspect of trademark registration. Trademarks are classified under 45 different classes, each class covering specific types of goods and services. The correct classification of goods and services is crucial as it determines the scope of protection offered by the trademark registration.

If the goods or services listed in the trademark application are not properly classified, the trademark examiner may raise an objection.

Same or Similar Trademark Exists

The Trademark Examiner may object to an application if there is an existing trademark that is the same or similar to the one the applicant is seeking to register. This is because under the trademark law, a trademark cannot be registered if it is confusingly similar to an already registered trademark. If a trademark is too similar to an existing trademark, it can lead to confusion among consumers and it can also dilute the distinctiveness of the already registered trademark.

Trademark is Deceptive

If the trademark applied for is considered to be deceptive or misleading, the trademark application may be objected by the trademark examiner.

A trademark is considered deceptive or misleading if it gives false information or misleads the general public. This includes, for

Example, trademarks that claim a product has certain qualities, properties or benefits that it does not actually have. A deceptive trademark may cause confusion, mistake or deception among consumers, which is why the trademark examiner may object to its registration. In such cases, the trademark applicant may need to modify the trademark or provide additional information to the examiner to overcome the objection.

Trademarks that are Disparaging or Offensive

A trademark that is deemed offensive or disparaging to a particular group of people, or is considered contrary to public morality, can result in an objection by the trademark examiner.

This is because such trademarks are deemed inappropriate or unacceptable for use in commerce and go against the public's general sense of morality and decency. The registrar of trademarks may raise an objection to the registration of such trademarks on the grounds that they may harm the public's moral and ethical values.

How to reply trademark objection

Review the objection letter to understand the grounds of objection.
Analyze the objection and gather relevant supporting documents and evidence.
Prepare a clear and concise response, addressing each objection individually.
Provide well-supported arguments and evidence to counter the objections.
Seek assistance from a trademark attorney if needed.
Submit the response within the specified deadline, following the prescribed format.

By Amit pawar

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