Difference between Trademark Objection and Trademark Opposition

Trademark

A trademark is a recognizable sign, design, word, phrase, or a combination of these that distinguishes the source of goods or services of one entity from those of others. Trademarks are used to protect brand identity and help consumers identify the origin of products or services. They can include logos, brand names, slogans, and even sounds or colors in some cases. Trademark protection helps prevent confusion in the marketplace and can last indefinitely as long as the trademark is in use and properly maintained. The process for registering a trademark in India is governed and prescribed by the Trademarks Act, 1999. Trademark opposition and trademark objection are the two crucial stages that a trademark registration application goes through.

Before a trademark is granted, an application for trademark registration may be contested and objected to. The terms “trademark opposition” and “trademark objection” are occasionally used interchangeably by confused individuals. These two terms are not the same, though. Additionally, there are significant differences between the trademark opposition and objection procedures.

How to Check the Trademark Status?

Once you apply for a trademark, you have to keep checking the trademark status online. You should follow these steps to check the Trademark application status.

Step 1. Visit the official website of Intellectual Property India.

Step 2. Select Trade Mark Application/Registered Mark from the left side of the window.

Step 3. Two options will appear. You have to select the National/IRDI number.

Step 4. In the next window, enter the Trademark Application Number.

Step 5. Now, enter the captcha and click on ‘View.’

Step 6. The next window will display your trademark status.

Step 7. If your trademark status is ‘Objected,’ it means that the examiner has raised certain points of objection regarding the application. It doesn’t mean that your application cannot be processed. However, you must reply to the status within a month of issuance.

Trademark Objection

Once a Trademark Application is filed and if other procedural requirements are in order, the registry will examine the Application and will issue an Examination Report citing certain objection. The objection cited can be either under Section 9 (Absolute grounds) or under Section 11 (Relative grounds) of the Trademarks Act, 1999.

Registering a trademark is essential as it offers legal protections and bսilds pսblic trսst in the brand. A legally registered trademark has a higher chance of enhancing and establishing its presence in the marketplace as it gains popularity over time.

Absolute grounds:

• The trademark does not possess any distinctive character.
• The trademark indicates the quality of the product it represents.
• c. The trademark is offensive to specific communities.

Relative grounds:

• The trademark can cause confusion among public because similar trademark already exist on the records in respect of similar goods or services.
• The applicant may reply to examination report that trademarks cited as conflicting marks are different from the applicant’s trademark, along with supporting evidence or applicant may present the NOC from the owner of marks cited as conflicting in the examination report.

The applicant receives a formal presentation of this objection in an examination report. The applicant has a deadline for responding after obtaining this report. By responding to the examination report’s concerns, the applicant can address those issues and provide further information or support for why their trademark should be registered.

The examiner’s objection is primarily meant to elicit from the applicant thorough clarifications or explanations. This kind of objection is made, especially if there are good reasons to think that the proposed trademark does not meet certain requirements for registration. The procedure makes sure that only trademarks that comply with the law are permitted to be registered.

It’s crucial to understand that an objection is not a denial but a request for clarification or adjustment.

Reasons for trademark objection

• Incorrect Name of the Trademark Applicant
• Incorrect Address on the Trademark Application
• Failure in filing Trademark Form TM-48
• Filing of Incorrect Trademark Form
• Trademark filing under the Wrong Trademark Class
• The proposed Trademark already exists
• Trademark lacks distinctive character
• Vague specifications of Goods and Services
• Deceptive Trademark
• User affidavit not attached

Process of Trademark Objection Reply

Replying to a trademark objection involves several steps. Here’s a general outline of the process:

1. Understand the Objection: Review the objection notice (also known as an examination report) from the Trademark Registry carefully. It typically outlines the reasons for the objection.

2. Gather Evidence: Collect any necessary documentation, evidence, or arguments that support your case. This may include proof of use of the trademark, distinctiveness, or any legal precedents.

3. Draft a Response: Prepare a structured response addressing each point raised in the objection. Make sure to:

• Clearly state the trademark application number and details.
• Address each objection point-by-point.
• Provide evidence or arguments to counter the objections.

4. Use Proper Format: Follow the prescribed format for submitting the response, which typically includes:

• A heading with your details.
• A reference to the objection notice.
• A detailed reply section.
• Signatures and dates.

5. File the Response: Submit the response to the Trademark Registry within the stipulated time frame (usually 30 days from the date of receiving the objection). This can be done online or through physical submission.

6. Await Examination: After submitting the response, the Trademark Registry will examine it. They may either:

• Accept the trademark application.
• Issue a hearing notice if further clarification is needed.
• Reject the application if the objections are not satisfactorily addressed.

7. Attend Hearing (if necessary): If a hearing is scheduled, prepare to present your case before the trademark examiner, providing additional arguments and evidence.

8. Receive Final Decision: After the hearing, the Registry will issue a final decision. If the application is accepted, you’ll receive a trademark registration certificate. If rejected, you can appeal the decision.

9. Consider Further Action: If your trademark application is finally refused, consider filing an appeal with the Intellectual Property Appellate Board (IPAB).

It’s advisable to consult a trademark attorney to navigate this process effectively.

TRADEMARK OPPOSITION

“Any person” who wishes to oppose a trademark application may do so by filing a Notice of Opposition on the prescribed form and paying the necessary fee, according to Section 21 of the Trademarks Act, 1999. The Opponent is the party that files the notice of opposition. It is not always required for the Opponent to be the registered owner of a trademark. He can be a buyer, a client, or a member of the general public who plans to make use of the products or services. The opponent is representing the general public as well as himself, according to the reasoning behind this, as having two marks that are similar on the market will only produce confusion among consumers.

Anybody may object to the trademark application in India within 4 months after the mark’s publication or advertisement in the Trademarks Journal by submitting a Notice of Opposition on the designated Form TM-O and paying the designated fee.

A legal objection to a new trademark application that might confuse customers or infringe upon an already-existing trademark is known as a trademark opposition. Once the trademark application is published in the official trademark journal, an objection to the trademark may be lodged in India within a certain amount of time. Through the legal process of trademark opposition, people or companies can contest the registration of a trademark that has been published in an official trademark journal. This procedure usually takes place subsequent to a trademark application’s preliminary acceptance, but prior to its complete registration.

Overview of Trademark Opposition

1. Purpose of Trademark Opposition

• Protection of Rights: Oppositions help protect the rights of existing trademark owners by allowing them to challenge new registrations that could infringe on their rights.
• Consumer Protection: By preventing confusingly similar trademarks from being registered, opposition proceedings help protect consumers from deception.

2. The Process

• Publication: After a trademark application is accepted by the trademark office, it is published in the official trademark journal (e.g., the Trademark Journal in India). This publication serves as a public notice.
• Filing an Opposition: Timeframe: Opponents typically have four months from the publication date to file their notice of opposition.
• Who Can Oppose: Any person or entity who believes they will be harmed by the registration can file an opposition. This includes competitors, existing trademark holders, or even consumers.
• Notice of Opposition: This document outlines the grounds for opposition and must be filed with the trademark office. It should include:
• 1. The details of the opposing party.
• 2. The trademark application number.
• 3. Specific grounds for the opposition, such as likelihood of confusion or descriptiveness.
• Counter Statement: The applicant (the party seeking registration) has the opportunity to file a counter statement within a prescribed period, addressing each point raised in the notice of opposition.

3. Grounds for Opposition

Common grounds include:

• Similarity: The opposing party may argue that the trademark is too similar to an existing registered trademark, which could lead to confusion among consumers.
• Descriptiveness: The trademark may be deemed descriptive of the goods or services it represents, lacking distinctiveness.
• Deceptiveness: If the trademark is misleading or likely to deceive consumers regarding the nature or quality of the goods or services.

4. Evidence Submission

Both parties can submit evidence to support their claims. This may include:

• Proof of prior use of an existing trademark.
• Marketing materials, advertisements, or sales data.
• Surveys or studies demonstrating consumer confusion.

5. Hearing

If the opposing party or the applicant requests a hearing, the trademark office will schedule one. During the hearing, both parties can present their arguments and evidence in front of a trademark official or board.

6. Decision

After reviewing the evidence and arguments, the trademark office will issue a decision:

• If the opposition is upheld, the trademark application will be rejected.
• If the opposition is dismissed, the trademark will proceed to registration.

7. Appeal Process

If either party is dissatisfied with the decision, they can appeal to a higher authority, such as the Intellectual Property Appellate Board (IPAB) in India or the appropriate appellate body in other jurisdictions.

Conclusion

Trademark opposition is a vital component of the trademark registration process, serving to protect the interests of existing trademark holders and maintain a fair marketplace. It allows for a structured way to challenge potentially conflicting trademarks and ensures that consumers can make informed choices.

TRADEMARK OBJECTION V/S TRADEMARK OPPOSITION

Particulars	Trademark Objection	Trademark opposition
Stage of initiation	As soon as the application for trademark registration is submitted, a trademark objection is raised. At the outset of registration, it is opposed.	The step of trademark opposition follows the stage of objection.
Who initiates	In the trademark registration application, the trademark examiner raises a trademark objection.	A trademark opposition can be filed by any third party opposing the trademark’s registration.
Form of initiation	In the form of a trademark examination report, the examiner submits a trademark objection.	A notice of opposition is submitted by a third party opposing a trademark.
Form of submission	In the report of the trademark investigation of the proposed trademark, the examiner files a trademark objection. You can examine the trademark examination report and its status online.	Third parties are required to provide supporting documentation and arguments for their proposed trademark opposition, or to explain how registering the proposed trademark will infringe upon the rights of the opposing party.
Reply	Within one month after receiving the trademark objection examination report, the applicant is required to reply to the trademark registrar.	After receiving the notice of opposition, the applicant has two months to reply to the registrar.
Appeal	After responding to the trademark objection, the applicant may submit an appeal if the trademark application is denied.	In the event of a trademark opposition against the trademark application, an appeal is filed against the registrar’s decision.
Fees	For the trademark objection reply, the applicant is not required to pay any fees.	When replying to the trademark opposition notice, the applicant must pay the specified fees.
Finality of process	The trademark is published in the trademark journal upon acceptance following the conclusion of the trademark objection procedure.	The decision of the procedures is shared with the applicant and the third party when the trademark is approved following the conclusion of the trademark opposition procedure.

Summary

• Objection: Internal challenge by the trademark office during application review.
• Opposition: External challenge by third parties after the application is published.