How do you draft a response to a trademark objection

How do you draft a response to a trademark objection

HOW TRADEMARK OBJECTION TAKES PLACE

Trademark objections and issue of Examination Report by the examiner of trademark is very common.

When we file an application for Trademark Registration it undergoes a series of steps which includes examination of trademark application, for which reply is to be filed by the applicant.

In this write-up we will discuss in detail about the steps for Trademark Registration in India and filing reply to examination report.

OFFICIAL STEPS IN REGISTRATION OF TRADEMARK

  1. Filing of Trademark Application in form TM-A.
  2. Examination of trademark application filed for registration.
  3. If out of the below stated reasons, if registrar has any reason for objection, he may issue examination report to which reply is to be submitted by the applicant or his legal representative, if any.
  4.  On the basis of trademark reply either accepting the application and sending it for publication or causing show cause hearing if not satisfied with the reply of the applicant to the examination report.
  5. On acceptance of application and sent for publication in trademark journal and mark is marked as “accepted and published”
  6. On publication of trademark 4 months’ time is given to the public to raise opposition if they are in any way aggrieved by the registration of applied trademark and they have valid reason for such opposition. Form TM-O is used for giving notice of opposition.
  7. On receipt of opposition 2 months will be given to the applicant to file the counterstatement to the opposition in form TM-O along with prescribed fees.
  8. On receipt of counter statement of applicant, opponent will file reply to such counter statement along with evidence in support of opposition.
  9. On receipt of reply from the applicant one month time will be given to the applicant to file evidence in support of the applicant.
  10. Again, opponent will be required to submit its reply to such counterstatement field by the applicant along with additional evidence if any.
  11. After giving reasonable opportunity to both the parties of submission of counter statement and reply there to along with evidence in support, registrar will order the show cause hearing.
  12. On the basis of such show cause hearing it is decided if the application is to be approved and trademark to be registered or refuse the registration in other case.
  13. On approval of application for registration of trademark, registrar will issue a certificate of registration under his hand and the trademark shall stand registered.
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LIST FOR REASONS FOR WHICH OBJECTIONS MAY BE RAISE BY THE EXAMINER OF TRADEMARK IN THE EXAMINATION REPORT:

  • Wrong description of nature of trademark
  • Wrong name of applicant
  • Non-submission or wrongful submission of Power of attorney
  • Error in principle place of business of applicant
  • Non -submission of consent or person or his legal representative if any
  • Wrong classification of Goods and services for which trademark is to be applied
  • Absolute grounds of refusal for registration as mentioned in section 9 of Trademark Act, 1999
  • Relative grounds of refusal mentioned in section 11 of Trademark Act, 1999

HOW TO FILE REPLY TO EXAMINATION REPORT ISSUED BY EXAMINER OF TRADEMARK

Few pointers on filing reply to the examination report are mentioned below:

  • Reply is to be filed within 30 days from the date of issue of examination report.
  • Reply should be in format prescribed in Form MIS-R.
  • There are no prescribed fees for filing reply, therefore it can be filed free of cost.
  • Before drafting such reply to examination report is to be read with due care.
  • Reply to each objection is to be filed, no ground should be left unanswered.
  • Applicable provisions and relevant case laws in support of the application are to be quoted in the reply.
  • Reply to examination report can be filed either after login on trademark portal or email can be send directly to the department regarding it with reply attached as PDF.

FAQ ON TRADEMARK OBJECTION REPLY

1. Which form is used to file the application for modification of application for registration of trademark?

Ans. For modification of application for registration of trademark application is to be made in form TM-M along with the prescribed fees.

  • Who is eligible for becoming the trademark agent?
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Ans. To become the trademark agent following persons are eligible:

  1. A member of Institute of company secretaries of India who has applied for registration as trademark agent in form TM-G.
    • An Advocate who has applied for registration as the trademark agent in prescribed form TM-G.
    • A graduate from any university, if he has qualified the examination conducted by the trademark department for the registration of trademark.
  • What are the fees for filing reply to examination report and which form is used for the purpose?

Ans. For the purpose of filing reply to examination report format prescribed in MIS-R is to be used. Reply is to be filed within a period of 30 days. There is no fees prescribed for filing reply to examination report. Thank for reading this writeup, for more information on filing application for trademark registration or reply to examination report of trademark you can connect to our team of experts at info@ccoffice.in or call us at 9988424211.

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