A trademark grants the right on the business to use several peculiar marks. This offers to build commercial value, reputation, and goodwill in the business’s customers’ minds. Nonetheless, there are several cases where the registrar of trademarks would refuse to allocate a trademark.
This blog will analyze the aspects of rejection and apt steps you can take in refusal post trademark online registration.
What could be the reason behind the trademark denial?
Absolute grounds for the rejection of a trademark.
- Under section 9 of the trademark act, 1999, then here are the following aspects by which the trademark can be refused;
- There is no differentiating factor in the mark – for instance, a stationery brand called pencils cannot be registered for being very general.
- Marks specifying the quantity, quality, and geographical origin – for instance, a rice production company selling its rice atta under the name ‘the best’ is, at best, only suggestive of quality. Likewise, place names generally do not allow unless they specify a clear relationship betwixt quality, origin, and peculiarity in the product.
- Mark sought to be registered already become a popular mark or has some into customary use. For instance, Xerox has come to mean photocopying in normal jargon, and that’s why it cannot be registered.
- Only marks specifying the shapes of products cannot be registered. Nonetheless, in shapes like that of Coca-Cola bottles, several packaging styles can be allocated trademark.
- Other reasons – the mark can cause uncertainty in public (Parle J and Parle G biscuits) and can wound religious sentiments, is obscene or scandalous, or uses a national symbol.
Relative grounds for rejection of a trademark.
When the mark is illusionary identical to an existing trademark, the registrar might reject the application for allocation to you. Nonetheless, it is a subjective assessment. That’s why it becomes crucial for you to convince the registrar of the uniqueness of your trademark.
How to formulate uniqueness in your mark.
Here are the factors that have to be examined by the officer;
- The mark owns the market share.
- How geographically widespread, intensive, and long-standing the usage of the mark has been.
- The amount invested by undertaking in promulgating the mark.
- The amount of relevant class of individuals who, due to the mark, recognizes products as originating from a specific undertaking.Statement of chambers of commerce and industry or other professional or trade associations.
Oppositional grounds from the other party for the refusal of the trademark.
- Within the 4 months of advertisement or publication, an individual can file an objection against the trademark’s allocation to the registrar.
- It can be any individual, and there is no requirement of any commercial interest.
- Generally, individuals possess a prior right to use the trademark or someone whose approval is required but were not considered the opposite while allocating the trademark. However, the opposition can also submit based on absolute and relative grounds, as stated above.
What happens when your trademark gets denied?
Procedure – you have to submit a counter-statement to the trademark opposition via form TM-6, with a description fee of Rs. 1000. Also, it needs the submission of evidence in the form of an affidavit supporting your trademark. Once the evidence is received, there will be an oral hearing in the presence of the hearing officer of the tribunal. If there is no revert from the applicant for the opposition, it might be taken as abandoned. Also, form TM-57 can submit with registered to seek a review of the decision within 1 month from the date of such decision.
How can one reduce the risk of rejection while applying for trademark registration online?
Specify your trademark clearly – offering a precise and accurate description of the trademark on the application helps in easy processing. This description should mention precisely what the mark includes (borders, shapes, colors) and how the description relates to the representation. This assists in explaining the scope of the registration, consisting of digital copies in color and B&W.
Present evidence of the mark’s usage – long-term use (even without registration) comes in handy in making a case for registration. That’s why to keep evidence of usage of the mark in internal communications with customers via advertising (web, print, or any other source).
Specify the correct international taxonomy of goods.
Keeping the scope of trademark application succinct – if the application for registration of a trademark is extensive (for instance, specifying just ‘machines’ without qualifying the use, type, or purpose of machines), it can be rejected by the registrar.
Get a no-objection certificate from the registered person if the names of individuals, pictures, and portraits are used in your mark.
What defines the refusal in the trademark?
The examiner of a trademark evaluates your application to discover if the allocation of a trademark is likely to cause any uncertainty to the public or usually be against the principles of trademark law. For this objective, they run a wordmark search (for similarity in sentences, words, or phrases) or phonetic search (for verbal resemblance). Based on this evaluation, they would evaluate if your mark affiliates closely with any other existing registered mark; your trademark might get rejected.