How to respond to trademark objections? – An Ultimate Guide

Securing a trademark is a vital step in establishing and guarding your brand’s identity, but it’s important to be prepared for unexpressed hurdles along the way. Approximately 60% of trademark applications receive objections from the trademark department. This does not mean your application is doomed; rather, it’s a chance to clarify or give more information. At Startupportal Business Services, we specialize in guiding companies through these challenges and securing their brand’s special identity. In this blog, we’ll support you through the way to effectively respond to a trademark objection and enhance your chances of successful registry.

What is a Trademark?

A trademark is a distinctive sign, hallmark, word, or project that identifies and distinguishes a business’s productions or services from others. It serves as a brand’s special identity, helping consumers recognize and consociate special quality with the brand. Registered trademarks extend legit security and exclusive rights to the brand owner, and they are usually valid for ten years, with the option to regenerate indefinitely. This protection helps prevent others from using alike marks that could create confusion or harm to the brand’s character.

Understanding Trademark Objection:

When you apply for a trademark, the Registrar of Trademarks examines your application to insure it meets all legit requirements. However, the Registrar may issue a” trademark objection, If any consequences rise.” This does not mean your application is refused; it’s simply a request for explanation or other information.

Common reasons for trademark objections include:

Similarity with Existing Trademarks: If your trademark nearly resembles an existing one, it might create confusion among consumers.
Descriptiveness: If the trademark describes the goods or services rather than distinguishing them, it may be objected to.
Deceptive Marks: If the mark is likely to mislead the public, it could be expostulated to.
Incomplete or Incorrect Information: Errors in your application or lacking details can conduct to objections.

How to respond to a trademark objection?

1. Submit a Counter Statement:

When you receive a trademark objection notice, the first and most pivotal step is to submit a counter statement. This must be done within 30 days from the assignment of receiving the notice. Failing to respond within this timeframe will affect in the status of your trademark application being changed to” Abandoned,” effectively ending your application process.

In your counter statement, handle each point of objection expressed by the opposition, giving detailed explanations and proof to support your trademark application.

2. Decision by the Regulatory Authority

After you submit the counter statement, the regulatory administration (generally the Trademark Registrar) will reconsider your response. The Registrar may also request a hearing to argue the objection in more detail.

Favorable Decision If the Registrar decides in your favor, your trademark will be accepted and advertised in Journal.
Unfavorable Decision If the judgment favors the opposition, your trademark will be excluded from the Journal, and your application will be declined.

3. Appeal to the IPAB:

Still, you have the option to appeal to the Intellectual Property Appellate Board (IPAB), If the decision is not in your favor. This appeal must be filed within three months from the date of the official authority’s decision.

Filing Late Appeals If you miss the three- month deadline, you can still file a plea by explaining the reasons for the detention and submitting a petition for the condonation of delay. Also, you must pay a penalty of Rs 2,500. If the IPAB accepts your reasons, your appeal will proceed to the next stage.

4. Hearing at IPAB:

Once your appeal is registered, the IPAB will arrange a hearing. The position of the hearing will be determined by the governance under Rule 2 (m) of the Trademark Rules.

During the hearing, both parties will present their arguments and proof. The IPAB will then make a verdict predicated on the merits of the case.

5. Potential IPAB Outcomes:

If one party fails to appear at the hearing, the IPAB has the authority to:

Rule on the case based on the available evidence.
Issue an ex parte order (a decision made in the absence of one party).
Dismiss the case altogether.
If the IPAB issues an ex parte ruling or dismisses the case, the affected party has 30 days to file a petition against the order.

6. Further Appeals:

However, you can further appeal to the High Court, if you are not completely pleased with the IPAB’s judgment. Additionally, appeals can also be filed with the Supreme Court of India.

Addressing a trademark objection can be a pivotal step towards guarding your brand’s future. With the right guidance, you can navigate these challenges and turn implicit setbacks into opportunities for success. At Startupportal Business Services, we specialize in helping companies through every stage of the trademark registration process. Contact us today for expert support and allow us to help you secure your brand’s future.