Trademark Registration in Delhi – Taxcrafted Solutions

Trademark objections are very common during registration and it simply means clarification is needed not a rejection. This article will help you out with the steps to respond and keep your brand protected.

What is a Trademark?

Companies and businesses use their logos, designs or some specific words to identify their products with uniqueness. These elements help consumers recognize the brand, quality and even the origin of product. Such identifiers are known as Trademarks. In India trademark are recognized as their property and are legally protected under applicable laws.

The Trademark Act, 1999 includes all matters related to trademark, including their registration, protection and penalties. This protection safeguard both company and consumer. A trademark registered under the Act is valid for 10 years can be renewed for 10 year period upon timely payment of renewal fees.

Registration of Trademark?

The process for registering a trademark is outlined under Section 18 of the Act. After filing a trademark application it take typically 1 to 2 years for registration. After the submission you will receive an application number which can be used to track your trademark application. The registration process follows-

• Vienna Codification: The trademark is first classified under Vienna codification.
• Formalities Check: Application is checked for required documents.
• Examination: An examiner reviews the mark for compliance and potential infringements.
• Exam Report: If no issues, the exam report is issued.
• Publication: Trademark is published in the Trademark Journal.
• Objection Period: 3 months (extendable by 1 month) for public or third-party objections.
• Registration: If no objections, the trademark is registered, and a certificate is issued, valid for 10 years from the filing date

Objection

An objection is normal in one of initial stages in trademark registration process. It can be raised either by the Examiner/ Registrar or by a third party.

• The Examiner/ Registrar may object under Section 9 or Section 11 mainly on these two grounds
• The application contains incomplete or wrong information
• There would be an existing similar trademark

A third part has always right to object to the registration in public interest. This can happen in two ways

• When the mark is published in the Trademark Journal.
• When the applicant uses the mark before registration, in which case the application status changes to Adv Before Acceptance.

Upon filing an objection, the application status changes to Opposed. The person opposing the registration must provide the grounds for opposition. The applicant is then given an opportunity to defend the application as per the procedure outlined in the Act.

How to respond to an objection?

Once an objection is filed the applicant gets a notice in which all specifications are mentioned in the notice.

• The first step for the applicant should be filing a counter statement within 2 months from the receipt of the notice.
• If there is no respond within the period the application is being marked as abandoned.

After the counter statement is filed:

• The Registrar may call for a hearing.
• If the ruling is in favor of the applicant, the trademark is registered.
• If the ruling favors the opposing party, the trademark is removed from the Journal, and the application is rejected.

Appeal to IPAB

• The applicant can file an appeal with the Intellectual Property Appellate Board (IPAB) within 3 months of the Registrar order.
• Appeals filed after 3 months require a petition for condonation of delay along with a fine of Rs. 2,500. If accepted, the appeal will be scheduled for a hearing.
• Filing must comply with the Trade Marks (Applications, Appeals and Fees to the IPAB) Rules, and all documentation must be verified by the applicant.

Processing by Deputy Registrar

• Each application is endorsed by the Deputy Registrar on the date of submission.
• If defects are found, the applicant is notified and must rectify them within 2 months; failure to do so leads to Abandonment.
• Once in order, the Deputy Registrar registers the case and assigns a serial number.

IPAB Hearing

• The IPAB schedules the hearing based on the jurisdiction of the case.
• During the hearing, the IPAB evaluates submissions from both parties.
• If a party fails to appear, the IPAB may:
• Rule on the merits of the case,
• Issue an ex parte order, or
• Dismiss the case.
• If a case is dismissed or ruled ex parte, there is a 30-day window to file a petition against the order.

Further Appeals

• The order passed by IPAB stands after the hearing, but the aggrieved party can appeal to the High Court with competent jurisdiction.
• Subsequent appeals may also be filed with the Supreme Court of India.