Trademark Objection Management

There are several reasons for the rejection of a trademark, however, the most common grounds are as follows:

Generic Terms: Words that are commonly used cannot be registered as a trademark. Such as 'sweets', 'sugar', 'milk' are generic words. A company cannot hold rights to such words exclusively.

Descriptive/Detailed Terms: Words or adjectives used to describe a product cannot be trademarked. Words like 'amazing', 'great' cannot be used and will most likely be rejected by the registrar.

Deceptive Trademarks: If a word of symbol misleads the consumer it cannot be trademarked. For example, a proprietor cannot name his beverage 'Alphonso' since it resonates with the Alphonso mangoes.

Offensive Terms: Offensive words or terms that are contrary to public order or morality cannot be registered. Words and symbols that are considered to be offensive or violate commonly-accepted norms of morality cannot be registered as trademarks.

Similar or an Existing Trademark: A trademark may be rejected if it is similar to an existing registered trademark. It would cause confusion amongst the consumers. Official Marks: Any mark or symbol that may contain flags, official names or hallmarks, state emblems of an international organization cannot be trademarked.

During the trademark's registration process, the trademark should fulfil the eligibility criteria as set out under the Trademark Act, 1994. In case the examiner feels unsatisfied with the trademark he may object to its registration.

The examiner may then inform the applicant of the same. The applicants will have to provide the examiner with a satisfying answer, on failing to reply to the application sufficiently the examiner may reject the application.

The register of trademark currently maintained in electronic form contains inter alia the trademark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trademark has been registered with the consent of the proprietor of an earlier mark or earlier rights, that fact.

If the registrar is not satisfied by the examiner he may mark it as 'objected' whereas 'opposed' trademark refers to an objection from a third party for the registration of a trademark.

You can review the trade mark objection report on the IPI website India.