Top 7 reasons leading to Objections in Trademark
Trademark Proceeding – Quasi-judicial in nature
Applying for a trademark may seem quite straightforward and simple when one sees the trademark application (TM-A or its previous form TM-1). It is common for clients to wonder why lawyers specialising in trademarks (not general law practitioners) charge a significant professional fee for such a simple process. Clients also tend to compare the trademark application process as that of applying for a PAN card or any statutory license. Applying for a trademark, i.e., securing your brand name, is no less a legal process than acquiring an immovable property. As a matter of fact, a trademark is a form of intangible property, i.e., intellectual property, which can be assigned, transferred, licenses and commercially exploited. While people at large typically go an extra mile in seeking legal opinions followed by second opinions to look for any encumbrances in the prospective immovable property they identified, they are not quite comfortable with the idea of hiring a trademark attorney or law firm and/or to invest in considerable time to conduct a market search, due diligence or even a trademark search within the Trademark Registry for any existing identical or conflicting trademarks before adoption or at least before application. Skipping this crucial part in an application lead to unwarranted complications, ranging from objections, refusals, reviews, oppositions, appeals, etc. leading to a multiplicity of litigations costing both money and time, more often the entire business.
Top 7 Reasons for Trademark Objections
While skipping a pre-application or pre-adoption due diligence clearance search would lead to significant complications, other incorrect inputs would also lead to complications resulting in refusals at worst. Here are the top seven reasons why a trademark application is often objected by the examining officer:
1. Incorrect Proprietor Type and Details
Proprietor is a broader term used to refer “a trademark applicant” regardless of the type and nature of business registration. It is important to choose the proper entity type based on the nature of the business, such as Single Firm, Joint Applicants, Partnership Firm, LLP, Body Incorporate, Public Limited Company, Government, Trust, etc. Failing to do so would invite objection, requiring you to file a corrective amendment with payment of Rs. 900/- to Trademark Registry + the attorney costs. It is also noteworthy to state that sole proprietor, individual, startups, and small enterprises enjoy a subsidized fee of Rs. 4500/- and others are liable to pay Rs. 9000/10000/- per class towards application fees.
2. Insufficient documents
If you intend to claim the subsidised fee structure, i.e., Rs. 4500/- or claim use of the mark in commerce, you must submit supporting documents such as MSME registration, start-up certificate issued by the central government, and/or user affidavit along with the application, as the case may be. Your application will not be examined if these documents are not filed at the time of filing the application. If you are represented by a lawyer, a power of attorney/authorisation letter duly signed by you and accepted by your lawyer should also be submitted along with the application.
3. Incorrect Class and broad description of goods and/or services
It is important to refer to the trademark registry website at www.ipinindia.nic.in for appropriate trademark Class(es), that are specific to the applicant’s goods and services. There are a total of 45 classifications of goods and services. Gone are the old practices wherein applications carried vaguely, broader description of goods and services. Now, every trademark applicant is required to accurately and precisely describe the goods/services by using the NICE database. Applications containing broad, unclear or vague descriptions are issued with preliminary objections requiring amendment of goods and services description in alignment with the most updated NICE Classification. In view of this, applicants are required to choose the most specific and appropriate descriptions that suit their goods and services from the harmonized classification database.
4. Failure to provide translation or transliteration
It is a mandatory requirement to provide translation or transliteration of the trademark being applied for if the mark is in any other language other than English or Hindi. If the mark is in a foreign or a local vernacular language, it requires a suitable translation and or transliteration, as the case may be, to be provided along with the application. Failure to do so would lead to filing corrective amendment along with prescribed fee.
5. Lacks distinctiveness
The law mandates that a trademark must be of a character that is well capable of distinguishing the goods and/or services of the trademark owner from others. Marks that are incapable of distinguishing the goods/services of one person from those of another are devoid of distinctive character and are refused as unregistrable under absolute grounds for refusal. Usually, marks such as logo, label, device, etc. comprising of multiple ingredients that are sufficient to distinguish itself from others proceed to registration, while other marks that is directly descriptive, incapable of functioning as a mark would fail. Sometimes when a trademark has been in use for a substantial period of time, it is deemed to acquire a secondary meaning and it is possible to get approval after submission of sufficient proof of acquired distinctiveness, although not guaranteed. It is important to consult with a qualified trademark attorney at the initial stages of brand development to avoid these issues.
6. Similarity with registered or pending trademarks
Among the other reasons and grounds of objections, a number of marks are affected by similarity refusals with other registered or pending marks. It is important to get a pre-application search performed by a trademark attorney in order to ascertain the risks associated with a proposed trademark. It is not necessarily that the mark should be exactly similar or identical for objection, even similarity in goods and services are also considered, and sometimes conceptual similarity is also taken into consideration. Adoption of well-known brand names as a part of a trademark would lead to objection regardless of dissimilarity in goods and services.
7. Merely descriptive in nature or has geographical significance
Trademarks carrying a descriptive word or a name of a city, state or region are also refused, unless the applicant is prepared to prove otherwise. In some cases, upon sufficient proof of acquired distinctiveness, some generic words are allowed to be registered. However, trademarks consisting of geographical names are refused, unless the applicant proves that the mark is fanciful and or the location does not have a population of 1000 if it is in India and 100,000 if it is overseas.
The above-discussed objections are not exhaustive, but only indicative among the few that are commonly issued by the trademark office. These objections not only delays the entire registration process but also costs additional charges in terms of government fees and attorney fee. The above risks can be avoided if you consult or engage a qualified trademark attorney for your trademark matters instead of restoring to cheaper alternatives.