It is a common misconception among the general public that trademark registration just begins and ends with filling up a form (TM-1) and submitting it before the trademark office. Contrastingly, a trademark application goes through several stages before it is finally registered, and in some cases, even after registration, revocation or cancellation proceedings are initiated by third parties under several grounds.
In other countries, objection and opposition are used interchangeably. However, in India, they denote different type of proceedings. Objection is instituted by trademark examiner and opposition, by a third-party.
What is objection?
Objection is a preliminary refusal issued by the trademark examiner after examination of your application. Some common grounds for objection are a) lack of distinctiveness (Section 9) b) similarity with pending or registered marks (Section 11). Other reasons are usage of geographical names, international proprietary names, offensive or obscene words as a part of or as a trademark. Objection is most cases can be overcome by proper representation before the registrar. Instances are there when the trademark office would sustain the objection and in such cases, one should approach the appellate board to appeal against the decision.
A periodical check on trademark application is very important, as the trademark office has slowly started weaning off the tradition of sending paper correspondences. This will help you file your response to objection in a timely manner.
Failing to overcome all the objections raised by the examiner will lead to abandonment of the trademark. The abandonment puts you into the position in which you were before filing the application – meaning, you’ve lost your money spent on filing.
What to do when objection is issued?
- Unless you know what you are doing, get in touch with a ‘reputed’ trademark attorney to represent your case
- Do not use sample or format available online. If you use them, the trademark office would not consider your reply and post your case for hearing.
- If you have claimed priority, ensure you have all the supporting documents as evidences to prove your continued, uninterrupted use of mark in trade.
- Respond to the objection within 30 days.
- If a hearing is scheduled, go to the hearing with all necessary documents, photocopies and with a copy of TM-16.
What is Opposition?
Opposition is a legal proceeding instituted by third parties against the accepted trademark soon after its publication in the trademark journal, generally within 3 months from the date of publication. Opposition can be filed by a third party having genuine interests in the trademark or by a person who feels that registration of mark would cause irreparable damages to him or to the public at large.
If you applied for a trademark, even though the trademark examiner reviewed and approved it, the mark is Published for Opposition so others may oppose, and opposition is becoming increasingly common and easier than ever before.
An opposition or cancellation, a very serious matter, can occur years after use of the name or trademark (Mark) or application for the Mark, is a law suit, and can lead to accusations and claims of infringement and monetary damages.
In most cases, the prevailing party, i.e., the winning party, is eligible to recover costs from the losing party. There are other diplomatic ways to solve the dispute through arbitration. Co-existence agreement through which disputing parties solve their issues and allow each other to use the mark under some terms and conditions, is a popular strategy used in other countries.
If you have lost your case, and you feel it was unfair, you have an option to appeal against the decision before the High courts. So, it would now make sense as to why it is important to hire a trademark attorney.