Trade mark application status “Objected”?

The trade mark status in the Indian Trade Mark Registry website shows as “Objected” when the Registrar/Examiner has raised any objections in the Examination Report.

After he / she scrutinizing the trade mark application, objections may be raised by the Registrar/Examiner under Sections 9 and 11 of the Trade Marks Act.

Section 9 objections are made when the Registrar/Examiner considers the trade mark to be descriptive of goods/generic/laudatory/indicating quality or nature of goods.

In order to overcome the Section 9 objection, it is necessary to show that the trade mark is inherently distinctive.  Section 9 objection can also be overcome if the trade mark has acquired a distinctive character as a result of extensive use. For this purpose, it is necessary to submit a user affidavit along with cogent evidences to show that the trade mark has acquired distinctiveness.

Section 11 objections are made by the Registrar/Examiner when there is an identical/similar trade mark in respect of identical/similar goods/services already on record in the Trade Mark Registry. In such cases, the Registrar/Examiner issues a computer generated Search Report with the list of conflicting marks.

When the trade mark application is objected, it is stipulated that a response should be filed within one month from the date of receipt of Examination Report.

The Trade Mark Registry usually uploads the Examination Report in the online records without any intimation to the applicant or its agent. Therefore, it is desirable to submit the response within one month upon knowledge of Examination Report being uploaded in the online records. In cases where the Examination Report is received from the Trade Mark Registry, it is important that the response is submitted within one month from the date of receipt of examination report. Otherwise, the trade mark application will be abandoned by the Trade Mark Registry due to lack of prosecution.

When the trade mark is objected, it is imperative that effective arguments are put forth by submitting a suitable response to the examination report in order to overcome the objections. Once written submissions are made, the Registrar/Examiner either accepts the trade mark or posts a hearing for allowing arguments to be put forth in person. In most cases, objections can be overcome if properly represented before the Registrar.

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