What is a trademark and why it is important?
A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression which identifies products or services of a particular source from those of others. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. For the sake of corporate identity, trademarks are often displayed on company buildings. It is legally recognized as a type of intellectual property. Trademark registration can also be obtained for a business name, distinctive catch phrases, taglines or captions.
Properly used and promoted, a Trademark may become the most valuable asset of a business. Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an indication of origin of the goods as well as an indication of quality.
It is also essential to obtain trademark registration for the business name/trade name under the Trademarks Act. Registration of a company or business name under the Companies Act does not in itself give protection against others who might commence using identical or similar marks.
Trademark objection
Trademark objection is a process where the trademark examiner may put an objection to your application due to certain reasons. The objection is not a denial to your wordmark/logo but the registrar seeks valid reasons or explanations about the mark and its capability to get registered. When the examiner objects your mark the status of the mark changes to “Objected” and an examination report is sent to your service address giving opportunity to the applicant to explain how the said trademark fits the criteria to avail valid registration.
There are mainly two specific reasons for trademark objection:
1. The Application contains incomplete or wrong information.
A trademark application needs to be perfect and without any errors or false information. If there is any wrong information such as, incorrect applicant name, principal place of business, etc. it is very likely to attract objection.
Some common errors are:
A. Incorrect details in Trademark form
B. Wrong filing of a Trademark form
2. Objections by examiner under Trademark Act.
Any trademark that is likely to spur confusion among the public or which misleads the public are deceptively similar mark. It can be about the product’s real source/ description between the related goods or services, its use, quality, and character.
The grounds of refusal of TM application can be divided into two parts:
- Absolute grounds of refusal– refer to the incapability of marks to be distinctive or graphically presented
- Relative grounds of refusal – These are always in connection with earlier trademarks and their related rights.
Some of Grounds are:
A. Deceptive Marks
B. Lack of Distinctiveness
C. The existence of an Identical Trademark
D. Offensive or obscene words as a part of or as a trademark
Note: After the reply has been filed the examiner may call for hearing in relation to the particular mark which is objected. The application will go forward only when the examiner is satisfied regarding the reply to objections raised.
Trademark opposition
After the hearing has been concluded and the examiner has been satisfied regarding the validity of trademark the status of the trademark changes from “OBJECTED” to “ACCEPTED AND ADVERTISED”. This is a phase where the trademark will be published in the Trademarks Journal. The purpose behind publishing a Trademark in the Journal is to enable any third party to view the trademark and file a trademark opposition against it. Simply put, a trademark opposition is filed by a third-party against the registration of your Trademark.
Who can file opposition?
Section 21 of the Trademark Act, 1999 states that ‘any person’ can file the notice of opposition. This includes individuals, companies, partnership firms and trusts. In fact, if two or more persons have the same issues against a trademark, they can be joined together as opponents.
The opposition in most cases is filed by:
- The owner of an earlier trademark application or registration covering a similar Trademark for similar goods.
- A person who has used the same or a similar trademark prior to the client, but who has not sought registration of the trademark. (Prior User)
Grounds of opposition:
- The trademark is similar or identical to an earlier or existing registered trademark.
- The mark is devoid of distinctive character.
- The mark is descriptive in nature.
- Application for the trademark is made with bad faith.
- The mark is customary in the current language or in the established practices of business.
- The trademark is likely to deceive the public or cause confusion.
- The mark is contrary to the law or is prevented by law.
- The trademark is prohibited under the Emblem and Names Act, 1950
- The mark contains matters that are likely to hurt religious feelings of any class or section of people.
Procedure:
1. Notice of Opposition
2. Counter Statement
3. Evidence in Support of Opposition
4. Evidence in Support of Application
5. Evidence in reply
6. Hearing
7. Registration or rejection:
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