In a layman’s language, a trademark can be defined as a design, symbol, mark, word or phrase that marks the identity for a specific product, commodity, or a service. It basically grants the lawful owner, a right of a lifetime to use, modify, or take any advantage from the registered trademark. It becomes a mark of identification for a specific brand, Company, etc. through which it can be easily identified from the rest of the brands present in the market.
Registration of trademark is governed under Chapter III of Trademark Act, 1999 read with Chapter II of Trademark Rules, 2017. In this article, we shall discuss about what to do in case objection is received against your application from the trademark department.
In accordance with Rule 33 of the Trademark Rules, 2017, once the requisite form for trademark application has been filed, the Registrar shall cause the application to be examined as per the provisions of the Act, wherein a search shall be conducted amongst the earlier trademarks, registered or applied for registration, for ascertaining whether any similar or resembling mark exists or not. The Registrar shall issue an examination report in case any similar or resembling mark is existing as on date or the mark that is proposed to be registered is in prohibition with the provisions of the Act.
In case the Registrar issues an examination report, the reply of the same has to be filed within one month from the date of receipt of the report. If the applicant fails to respond to the communication, the Registrar may treat the application as abandoned.
Further, if reply to the examination is not satisfactory or where the applicant has requested for hearing, the Registrar shall provide an opportunity of being heard to the applicant. Thereafter, on the satisfaction of the Registrar, he shall cause the mark to be accepted and advertised.
TIPS TO DRAFT REPLY TO EXAMINATION REPORT
1. Always mention application number, date of application, name of applicant and other important details on the top of the reply and in bold.
2. Start with the brief background of the applicant.
3. Explain about the area of business of the applicant in which he proposes to use the mark.
4. Highlight the importance of mark to the applicant.
5. In case the applicant claims to be a prior user, mention sales and purchase figures and attach copies of some invoices as well along with the amount spent on advertisement of the mark.
6. Case laws are the tools which empower the court of law to read between lines and help to arrive at conclusion. It is always highly recommended citing case laws in support of your reply.
7. Give clear point wise difference between the mark cited by the Registrar and your mark in a tabular format.
8. Always mention prayer clause.
Please note that the reply to the examination report can be submitted online by Trademark Attorney/Agent as well as offline by the applicant by dispatching/ physically submitting the same to the Trademark Department. Further, it is pertinent to note that there is no statutory fee for submitting the reply as aforesaid.
{The author is a Company Secretary in Practice and can be reached at (M) 9999952595 and (E) cskajalgoyal@gmail.com}
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