Various Grounds for Trademark Objections

The Indian Trademark Office may object to a trademark application based on specific grounds detailed in Section 9 and Section 11 of the Indian Trademarks Act. The primary reasons include when the submitted trademarks lack uniqueness, are too descriptive and generic, or conflict with previously registered or pending trademarks.

Objections Under Section 11

This section deals with objections about the similarity between the proposed and existing trademarks.

• Identical Marks:For instance, applying for “Thunder” as a beverage trademark when “Thunder” already exists in the same category would invite an objection due to the identical names.

• Similar Sound: An application for “JoyTEA” for tea products might face objection if “JuyTea” is already registered in the same sector due to the similarity in sound.

• Similar Concept:Applying for “Herin” for a shampoo company might conflict with an existing “HerinCare” mark since both suggest similar concepts.

Objections Under Section 9

This section focuses on trademarks that might be too obvious, lack distinctive character, or could be misleading.

• Descriptive Terms: A trademark like “StrongBottle” for bottles could face objection because it directly describes the product.

• Lack of Distinctiveness:Attempting to register a simple geometric design like a square for furniture might be objected to for lacking a unique identity.

• Deceptive or Misleading: Brands that misrepresent their products, such as “Fitness Organic Bar” for a chocolate range with non-organic ingredients, could face objection due to potential consumer deception.

Documents Required for Trademark Objection

• Examination Report: This can be found by submitting the application number of your trademark filing and we can find out for you what objections has been raised as part of trademark examination report.

• Power of Attorney: The Power of attorney will enable us to file reply on your behalf and do all such acts and activities to submit reply to the examination report.

• Supporting Documents: To satisfy the Registrar about the usages of the mark, we may require from you certain supporting documents and various other information to make a detailed reply.

For further details, connect to us at tm@ccoffice.in or 9988424211

Examination Report

MIS-R stands for "Miscellaneous Reply". When relying to an trademark examination report issued by the trademark registry, a miscellaneous reply is a response submitted by the applicant or their representing addressing any objections or queries raised by the examiner during the examination process. After a trademark  application is filled, it undergoes examination by the trademark registry to ensure compliance with legal requirements and to verify that the mark is distinctive and capable of distinguishing the applicant's goods or services. If the examiner identifies any issues or objections with the application, they will issue an examiner report outlining the objections and requesting a response from the applicant within specified period, typically 30 days. The applicant or their representative can then submit a miscellaneous reply addressing each trademark objection raised in the examination report. The miscellaneous reply should provide relevant arguments, evidence and clarifications to overcome the objections and demonstrate the eligibility of the trademark for registration.

Reply Accepted or Not Accepted

If the Examinationer is satisfied with the REPLY TO EXAMINATION REPORT, the status of the application on the portal will show Trademark status "accepted" and when the trademark is published in the trademark journal, the Trademark status will change from accepted to Accepted & Advertised.

If the Examiner is not satisfied with the reply, then the objections cannot be waived on the basis of the Reply submitted by the Applicant or Trademark Attorney/Agent. Then Show Cause Hearing Notice is issued and the Application's status on the portal will show Trademark status "Objected" with Alert as "Ready for Show Cause Hearing".

Abondoned in the process of trademark registration means, you did not either file reply to the Examination report/attended show cause hearing or during opposition, you did not file counter statement if your trademark application has been opposed.

Abondoned

However the reply to the Examination report should be submitted witin 30 days of receipt of such examination report, failing which the Registry may abondon the application made, the status of the application on the portal will show trademark staus "Abondoned", implying that the applicant must give up the claim over the Trademark. As a result, the status of the Application should be checked on a regular basis to avoid any difiiculty or inconvenience in claiming the rights to the Trademark.

Various Reasons for Trademark Objections

The Followings are the possible grounds under which the opposition of trademark is also made:

• When the trademark contains matters which are likely to bruise the religious feelings of any class or section of society.
• The mark is identical, similar or deceptively similar with the existing trademark.

Difference Between Section 9 and Section 11

Section 9 related to Absolute Grounds for Refusal of Registration

• In this section mark lacks distinctiveness or fails to serve its purpose as a trademark.
• The mark is devoid of any distinctive character.
• The mark is descriptive, referring directly to the kind, quality, intended purpose, or other characteristics of the goods or services.
• the mark is generic or consists exclusively of common trade terms.
• The mark mark may deceive the public or be contrary to public policy or accepted moral standards.
• Essentially, Section 9  ensures that only distinctive and non- deceptive marks are granted trademark protection. 

Section 11 deals with the Relative Grounds for Refusal of Registration

• this section deals with conflicts between a new trademark and existing rights. It addresses the situation where a new application may infringe on the rights of already registered or well known trademarks
• The mark is identical or confusingly similar to an existing trademark, creating a likelihood of confusion.
• The mark could take unfair advantage of, or be detrimental to the reputation of an existing well-known mark.
• The trademark may cause confusion due to similarity with a previously registered mark, particularly if both are used for the same or similar goods/services.
• this section protects the rights of prior trademark holders and prevent market confusion.

In summary, Section 9 focuses on the inherent characteristics of the trademark itself, while Section 11 is concerned with potential conflicts with existing trademarks.

Legal Procedure

Trademark Objection: If the application is found violating section 9 or 11 of Trademark Act, 1999, the trademark officer sends their Examination Report with the objection and similar brands under the class filed.

Below are the stepwise procedure for your easy understanding

Analysing the objections

• The first thing to do is to look at the Trademark Examination Report and see on what sections the objections has been raised.

• It is also important to give attention to see if there is any trademark rectification required.

Executing the POA

• A Power of Attorney is an essential document which enables us to do all acts and activities to file the trademark reply.

• Team CCL will be sending you the draft POA to be taken on non-judicial stamp paper and get notarized.

Arranging the Supporting Documents

• To waive off the objections raised by the Registrar of Trademark, they need certain proofs including but not limited to User Affidavit.

• All other supporting documents are compiled to satisfy the department as to why they should accept the trademark application.

Drafting and Filing of Reply

• Drafting of reply for objection raised by Trademark Examiner.

• Filing of the detailed reply to the Registrar of Trademark.