Trademark objections are increasingly becoming common these days because of various reasons; one main important reason being lack of awareness among applicants and counsels who file applications. Objections are raised by trademark examiners in the following circumstances:
- Trademarks that are not distinctive in character and not capable of distinguishing the goods or services of one person from those of another person, and consists of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services and consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.
- Descriptive of the trade.
- Hurting religious sentiments or defaming any section of the society
- Containing obscene or scandalous marks.
- Deceptively similar trademarks, e.g., adding or modifying existing registered trademarks
- Using popularly-known trademarks
- Prohibited marks
- International Non Proprietary Names (INN)
- Procedure errors, lack of information, etc.
One should refer to the details of Nestle’s Maggi (Noodles) case. In this case, a Mumbai-based home appliances firm filed an application to register this mark. This application was opposed by Nestle before the Senior Examiner of Trademarks. The Swiss firm argued that the term ‘Maggi’ was not a word in the dictionary and was derived from the surname of the company’s founder Julius Maggi. The word usually connotes the goods that Nestle produced, the company further said.
It went on to explain that products under the name ‘Maggi’ had been sold in several worldwide markets since 1887. The brand has even been listed as a superbrand by some journals. In India, Maggi products have been sold since 1974 and crores of rupees have been spent every year in promoting the brand, the company said. However, the examiner overlooked all such facts and shot down Nestle’s opposition on the ground that it was not firm in its claim.
The Intellectual Property Appellate Board (IPAB) has held as invalid a Mumbai-based firm’s claim over the trademark ‘Maggi’, a world-famous brand name that has been popularised by Swiss firm Nestle.
How to avoid trademark objections?
There is no rule of thumb to avoid objections. Objections sometimes can be merely to seek more information. However, some of these methods can help you avoid objections and save money:
- Please spend some time to coin an unique trade mark
- Do not try to trademark names of incorporated companies or e-commerce sites.
- Do a thorough search through the trademark registry – please engage an experienced trademark attorney to do this,
- Have the search report printed just before filing the application,
- Do not try to register popular marks even though they are not registered,
- Do not try to register marks that are prohibited, scandalous or obscene in nature,
- Do not try to imitate popular logo or label.
- Do not try to register a phonetically similar trade mark
Why trademark search is very important?
Although a trademark search may seem simple and can be performed by everyone who has access to the trade mark registry website, it is best done by an experienced trademark attorney. There are several other things to consider including the aforementioned things discuss above and if you are serious about taking your business to the international level, you would be best served by performing a search before USPTO, IPO, IPAustralia and WIPO to see if there are any existing or similar marks.
Disclaimer: Viewers are strongly advised to not construe this information-only post as a legal advice or opinion. No warranty or liability shall be claimed over the correctness of the post. Please consult an qualified trademark attorney for your legal questions.