Often during the registration process, the Trade Mark Registrar or private individual may raise an objection for registration of a Trademark. The article explores what steps need to be taken in case a trademark is objected.
1. What is a Trademark?
Companies and enterprises use logos, designs or a certain set of words to identify their products as their own which is unique and distinguishable. These designs or words help make it easier for the consumer(s) to identify the brand, quality and even the origin of the product. Therefore the marks that these companies use in the course of their trade are known as Trademarks.
In India, trademarks are given the recognition of an intellectual property and therefore is protected against infringement under applicable law(s). The Trademark Act, 1999 (hereinafter referred to as the Act) governs the laws of trademarks including its registration, protection and penalties. Such protection is for both the company as well as the consumer. Registration of the trademark under the Act is for a period of 10 years and can be further renewed for another 10 years subject to timely payment of renewal fees.
2. Registration of Trademark?
The process of registration of a trademark is set out under Section 18 of the Act. Once you file an application to register a trademark it can take between one to two years for it to be registered.
Once you file the application for registration, you will be given an allotment number using which you can check the status of your application. The process follows as such:
- First, the mark will go for Vienna codification
- Then they will do formalities check, to see if the application has been filed with all required documents.
- Next, it will be marked for an examination. Which means it will be sent to an examiner who will examine the mark for any infringements of provisions under the Act
- If no issues are seen then the exam report will be issued.
- After the exam report is issued the mark will be published in the official gazette, the Trademark Journal.
- Upon publishing it in the Journal a window of 3 months, which may be extended for an extra month, will be open for the public or third parties to object to the registration of the trademark.
- If there are no objections then the trademark will be registered and the applicant will be given the registration certificate and he will be protected for ten years from the date the application was filed.
An objection is one of the initial stages in the registration process. It can be filed by either the Examiner/Registrar or any third party. An Examiner/ Registrar may file an objection under Section(s) 9 (Absolute Grounds of Refusal) and 11 (Relative Grounds of Refusal) of the Act on primarily two grounds –
- If the application contains incomplete/wrong information ; or
- If there is already a similar trademark(s) in existence.
A third party may object to the registration of a trademark in the capacity of public interest. There are two ways where a third party gets a chance to object to the registration of a trademark.
- When the mark is published the Trademark Journal or,
- When the applicant uses the mark before its registration. In this case, the status of the application will be changed to Adv Before Acceptance.
Upon filing an objection, the status of the application will change to “Opposed”. While filing an opposition the person opposing it must include the grounds upon which he is opposing the registration of the trademark. The examiner will provide the applicant due opportunity to defend his application as per the process laid out under the Act.
4. How to respond to an objection?
Once an objection is filed the applicant will be given due notice about the objection as well as the grounds of objection.
- The first thing one must do is file a counter statement to the objection.
- This must be done within 2 months from the date of receipt of the notice of objection
- Failure to file an objection within 2 months will change the status of the application to Abandoned.
Once the counter is filed, the Registrar may call for a hearing if he rules in favour of the applicant the trademark will be registered. If he rules in favour of the opposing party, the trademark will be removed from the Journal and the application for registration will be rejected.
At this juncture, the applicant may file an appeal to the Intellectual Property Appellate Board (IPAB):
- The appeal must be filed within 3 months from the date of the order passed by the Registrar.
- If an appeal is filed after the period of 3 months, the applicant must state the reason for the delay by filing a petition for condonation of delay with a fine of Rs 2,500. If the reason is accepted by the IPAB the appeal will be posted for hearing.
- The filing must be done according to the rules prescribed in TradeMarks (Applications, Appeals and Fees to the Intellectual Property Appellate Board) Rules (hereinafter referred to as Trademark rules).
- All of the documentation must be verified by the applicant
- Every application must then be endorsed by the Deputy Registrar on the date of on which the application is presented
- If the Deputy Registrar finds any defects with the application he will give notice of the same
- The defects must be fixed and the application must be resubmitted within 2 months by the applicant.
- Failing to do so, the Deputy Registrar will deem the application to be Abandoned
- If the application is found to be in ordder, the Deputy Registrar will register the case and will allot it a serial number.
Once the case is registered the IPAB will hear the case. The place of the hearing will be decided upon the jurisdiction under which the case falls according to rule 2(m). A date will be given for the hearing of the case. The hearing will follow as such.
- The IPAB will decide on the case based on the submissions made by the two parties.
- If one party fails to present themselves on the day of the hearing, the IPAB can:
- Rule on the merits of the case
- Give an order ex parte (in the absence of one party)
- Dismiss the case
If the case is dismissed or is ruled ex parte a period of 30 days from the date of the ruling is given to file a petition against the earlier order.
The case will be heard and the order passed by the IPAB will stand. If the applicant is aggrieved by the order passed by the IPAB he still has the option to file an appeal to the High Court with competent jurisdiction. Subsequent appeals can also be filed to the Supreme Court of India.