Once the trademark application is filed; it goes to the trademark officer for further examination. It is the duty of the officer to scrutinize the application and accesses its validity under the provisions of the Trademarks Law.
The same report is published on the IPIndia website and can be checked with the TM application status number. Since the examiner takes all the decisions regarding trademark registration, it lies solely on him/her on whether to proceed with the application or reject the registration of the mark.
It’s mandatory to reply to the examination report with a period of 30 days. Either the applicant or person authorized by the applicant can reply to the examination report. The reply can be submitted online with the necessary forms or documents explaining the validity of the trademark claim by the applicant. If the examination is not replied to, the application stands as cancelled.
To avoid any mistakes in your application, it is necessary to understand the grounds on which objections are raised by the trademarks officer.
Section 11 of the Trademarks Act, 1999, contains the relative grounds for refusal of a trademark registration. If the examiner finds that the applied mark is similar to an already existing one, then he/she can refuse its registration to avoid confusion.
The purpose of these grounds is to protect the rights of the trademark owner. For example, Nike is a registered trademark, and no other company can register this name in a similar class as it would lead to confusion among customers.
How to reply?
In such a situation the applicant has to present a proof of prior use of the mark or why his/her mark is different from the other similar trademarks. The applicant can also present a letter of consent from the proprietor of the similar trademark.
According to Section 9, a mark must be distinctive and should not hurt public sentiments or contain obscene content.
If the objection is due to non-distinctive mark, then the applicant can claim the extensive use of the products or services as proof of distinctiveness of the mark. An affidavit as evidence of the use of the mark can be attached with other documents. The mark’s distinctiveness can also be established from the products and services it represents.
These requirements are laid down by the office or mentioned in the Trademark Law. Failing any of the legal requirements can lead to rejection of the application.
How to Reply?
Take the help of a professional attorney to tackle the errors in filing. You can also request the examiner to correct the required information.
The examiner can object if he/she finds incorrect selection of the trademark class. Objection 2A is applied in case goods and services mentioned in the application do not fall in the correct trademark class. Objection 2B states some of the goods or services fail to fall into the correct trademark class.
The applicant can ask the examiner to correct the trademark class or delete the items which do not fall in the trademark class and apply for those items separately under the correct class.