An application for trademark registration can be objected to on two grounds that are absolute grounds and relative grounds. The absolute grounds for refusal of trademarks are specified under Section 9 and the relative grounds for refusal of trademarks like clashes with previous trademarks, well-known marks, or because it is barred from being registered under Section 11. But the grounds specified under section 9 can be overcome in some ways. In this blog, we will focus on the ways to overcome the trademark objection given under Section 9, i.e., on absolute grounds.
When a candidate applies for trademark registration, the examiner reviews the information to confirm the validity of the trademark. If the trademark examiner raises any objection against the application for whatever reason, the registrar will ask for a reply against the objection raises. Generally, it is a third party that opposes trademark registration.
An applicant may encounter the following grounds for refusal of a trademark under Section 9:
A. Marks that are devoid of any distinctive character
This means all marks are not capable of having a distinguished identity in the market because they are very common to the public. Marks are non-distinctive when they contain only words that are widely used and have dictionary definitions. These marks usually have no unique brand identity.
B. Marks that consist of only such words that are descriptive of trade or goods being provided
The best way to explain this trademark objection under Section 9 is through the example of Apple Inc. If Apple Inc. sold apples instead of electronic products, they would have come across this objection while getting their brand registered. This is the most common absolute ground for refusal of trademark registration, covered under Section 9(1) (b) of the Trademark Act, 1999.
C. Trademarks that consist of words and designs which have become customary in the course of trade
An example of this can be the mark “Xerox,” which has now become customary and a substitute for the word ‘photocopying’. However, since the Xerox owners have been using the mark for a long time, it has become a well-known mark.
D. Capable of confusing the public
For example, if someone applies for registration of the mark “Adidas,” it is very likely to confuse the market with the well-known trademark “Adidas.” As a result, the mark that is causing such confusion is subject to trademark objection under Section 9.
E. Matter is likely to hurt the religious sentiments
India is a secular country and a lot of people have different religious beliefs. It becomes the duty of young entrepreneurs to make that extra effort to protect religious sentiments. Hence the trademark objection under Section 9 also protects religious beliefs. In 2015, the word “Ramayan” was refused for registration under class 3. The reason behind this order was that this term is associated with religious sentiments, and no individual can claim an exclusive right to such a word.
F. If the mark consists of obscene or scandalous matters or a restricted name
The Emblems and Names (Prevention of Improper Use) Act, 1950, set out a list of restricted names. No one can apply for trademark registration for any of these names. Further, any matter that is obscene or scandalous in nature is also prone to objection under Section 9.
G. Any business logo consisting of the shape of the gods with the intention of selling.
A business logo consisting of a shape or images of gods that are made to raise their purchase quantity is objected to under section 9. Such a logo will show disrespect towards gods and religious sentiments.
The trademark objection raised under section 9 can be overcome by taking some measures to protect your mark from being refused. They are as follows:
As there are lakhs of registered trademarks in India, it is common to receive a trademark objection from the Registry. One must file a reply to the examination report within one month of receiving the objection from the Trade Marks Registry and any further delay may lead to the abandonment of the applied mark. One must keep in mind the above-mentioned points while drafting a reply to overcome the objections.
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Thank you for this insightful and well-explained guide on trademark objection reply! Understanding the complexities of responding to a trademark objection is crucial for ensuring successful registration. Your article provides a clear roadmap, making it easier for businesses and individuals to draft an effective reply while adhering to legal requirements. A well-structured response addressing the examiner's concerns with proper legal references and justifications can significantly increase the chances of approval. If anyone is facing difficulties in filing a trademark objection reply, seeking expert assistance can save time and prevent costly mistakes.