Difference Between Objected Trademark and Opposed Trademarks
Difference Between Objected Trademark and Opposed Trademarks: A Comprehensive Guide
In the process of trademark registration, an application can face several hurdles. Two of the most common issues that arise are trademark objections and trademark oppositions. While both might seem similar, they represent different stages of the trademark registration process and require different approaches for resolution. In this comprehensive guide, we will delve into the key differences between an objected trademark and an opposed trademark, the necessary compliances to avoid these situations, and the actions required to mitigate and resolve them. We will also explore case laws, examples, and best practices for handling objections and oppositions.
Trademark Objection vs. Trademark Opposition: Understanding the Basics
When a trademark application is submitted for registration, it goes through a rigorous examination process. During this stage, objections or oppositions may arise:
• Objected Trademark: This occurs during the examination stage when the trademark examiner raises concerns regarding the registration of the trademark. The examiner may object based on various grounds under the Trademark Act, 1999.
• Opposed Trademark: This happens after the trademark is published in the Trademark Journal. Any third party, typically one with a vested interest in the market, can file an opposition to the registration, claiming that the proposed mark conflicts with their existing rights.
Table: Key Differences Between Objected and Opposed Trademarks
Trademark Objection: Grounds and Compliance Requirements
When a trademark application is examined, the Trademark Registry may issue an objection notice if the examiner believes that the mark is not fit for registration. The most common grounds for objections under the Trademark Act, 1999 are:
1. Similarity with Existing Trademarks (Section 11): The trademark examiner may object if the applied mark is deceptively similar to an existing registered trademark or a pending trademark application.
2. Lack of Distinctiveness (Section 9): If the mark is not capable of distinguishing the applicant’s goods or services from those of others, it may be objected to.
3. Descriptive Marks (Section 9): Marks that are merely descriptive of the goods or services, such as "Fast Delivery" for courier services, may face objections.
4. Deceptive Marks (Section 11): Marks that are misleading or likely to cause confusion about the nature, quality, or geographic origin of the goods or services may also be objected to.
Compliance to Avoid Trademark Objection
To avoid trademark objections, applicants must carefully select their trademarks and ensure they meet the following criteria:
• Conduct a thorough trademark search to ensure there are no existing marks that are similar or identical to the proposed mark.
• Ensure that the mark is distinctive and not descriptive of the goods or services.
• Avoid using deceptive terms or misleading representations in the trademark.
Responding to Trademark Objection
Once an objection is raised, the applicant is given 30 days to respond with an appropriate reply. This response should include:
1. Detailed Reply to the Examination Report: The reply should address each ground of objection raised by the examiner and provide reasons as to why the mark should be accepted for registration.
2. Supporting Documents: Evidence such as sales invoices, advertisements, and customer testimonials can help demonstrate the distinctiveness and use of the mark.
3. Case Laws and Judgments: Citing relevant judgments from the High Court and Supreme Court can strengthen the reply.
Example of Objected Trademark
In the case of ABC Pharma Ltd., the trademark "Medicore" was objected to on the grounds of similarity with an existing registered mark "MediCare." The company responded by providing evidence of prior use and argued that "Medicore" had acquired distinctiveness in the market.
Trademark Opposition: Grounds and Compliance Requirements
A trademark opposition is a challenge initiated by a third party after the mark is published in the Trademark Journal. The following are common grounds for trademark opposition:
1. Prior Use (Section 11): The opponent may claim that they have been using a similar mark in commerce before the applicant’s filing date, thereby establishing prior rights.
2. Likelihood of Confusion (Section 11): If the opponent believes that the applicant’s mark is confusingly similar to their registered trademark, they may file an opposition.
3. Well-Known Trademark (Section 11): If the opponent owns a well-known mark, they may oppose the registration of a similar or identical mark, even if the goods or services are unrelated.
4. Bad Faith Application: Oppositions may also be filed on the ground that the applicant has applied for the mark in bad faith, with the intent of misleading consumers or benefiting from the reputation of an existing brand.
Compliance to Avoid Trademark Opposition
To avoid oppositions, trademark applicants must ensure that:
• They have conducted a thorough trademark search and have taken steps to avoid filing a mark that is similar to existing well-known marks.
• They should verify the prior use of their trademark in commerce to strengthen their application.
• They must be prepared with evidence demonstrating their intent to use the mark in connection with their goods or services.
Responding to Trademark Opposition
Upon receiving an opposition notice, the trademark applicant must submit a counter-statement within 2 months. The counter-statement should address each ground raised by the opponent and provide justifications for why the mark should be allowed to proceed. The required actions include:
1. Drafting a Strong Counter-Statement: The response must address each claim made by the opponent and provide evidence to support the applicant’s case.
2. Presenting Evidence of Use: Evidence of prior use, sales, advertisements, and market recognition can strengthen the defense.
3. Legal Precedents: Citing relevant judgments from trademark dispute cases can bolster the defense.
Example of Opposed Trademark
In the case of XYZ Pvt Ltd., the company applied for the trademark "TechWorld" in Class 9. However, an opposition was filed by Global Tech Solutions, claiming that the mark was confusingly similar to their registered trademark "TechSolve." The applicant provided evidence of prior use and argued that the marks were visually and phonetically distinct.
Table: Grounds and Actions for Objections and Oppositions
Relevant Judgments on Trademark Objections and Oppositions
Several High Court and Supreme Court judgments have clarified the grounds and processes for resolving trademark objections and oppositions.
1. K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. (1970): The Supreme Court held that similarity between two marks is judged based on overall impression rather than individual elements. This ruling is often cited in opposition cases to argue against claims of confusing similarity.
2. ITC Ltd. v. Nestle India Ltd. (2014): The Delhi High Court ruled that trademarks that are descriptive can be registered if they have acquired distinctiveness through extensive use. This judgment is often used to counter objections based on lack of distinctiveness.
3. Bajaj Electricals Ltd. v. Steel City Appliances Ltd. (2008): The Bombay High Court clarified that oppositions based on prior use must be supported by evidence of continuous use and market recognition. This ruling is crucial for defending trademark applications against opposition claims.
Conclusion
Understanding the differences between trademark objections and oppositions is critical for successfully navigating the trademark registration process. While objections arise during the examination stage, oppositions are filed by third parties after publication. Both processes require prompt action and a strategic approach to resolve. By preparing strong replies, gathering evidence, and citing relevant case laws, trademark applicants can mitigate the risk of objections and oppositions, ensuring the successful registration of their marks.
