IP Rights Trademark Objection

Differences between Trademark Objection and Trademark Opposition

Overview

A Trademark is a form of Intellectual property in the form of a logo, name, slogan, and symbol or numerical used to distinguish its goods or services from the goods and services of others. A trademark becomes the intellectual property when it is registered, and it is used for commercial purposes by a company and provides certain rights along with it that are known as intellectual property rights. A trademark once registered prevents others from using, copying, selling or distributing the Trademark without the explicit permission of the owner of the Trademark.

Trademark Objection and Trademark Opposition are two important phases that a trademark application may go through.  Prior to granting the Trademark to the owner, an application for registration of a trademark goes through a set of stages. A trademark, if it is deceptively similar or identical to an earlier trademark or if it does not comply with the trademark registration principles, can be objected or opposed in its pursuit of attaining trademark registration. These processes are called as Trademark Objection and Trademark Opposition.

 Both these terminologies are different in its meaning and the application of its procedures during a registration process of a trademark. However, people often misunderstand their meaning and may use these terms interchangeably. This confusion may lead them to go for incorrect legal remedy when they have to go through either of Trademark Objection and Trademark Opposition. Therefore, it is invaluable for us to understand these terms. In this article, we shall closely study the differences between Trademark Objection and Trademark Opposition.

Meaning of Trademark Objection

When an applicant applies for registration of Trademark, the examiner then examines the application. If the intended Trademark violates rules and laws of the Trademarks registration, then the Trademark registrar may object. This is called as the Trademark Objection. The objection is brought to the notice of the applicant who then has to promptly reply to that objection within the prescribed time limit.

Meaning of Trademark Opposition

A Trademark Opposition is a provision of opposing a trademark after it is published in the trademark journal. An opposition against an intended trademark can be raised by a third party if the Trademark sought for registration is similar or identical to his or her registered Trademark. This provision of opposition prevents a person from using a similar or identical trademark which may create confusion among the public, and it may prevent people from making illicit gain from a similar trademark to the one that is established and popular.

Basic Difference between Trademark Objection and Trademark Opposition

There are some major conceptual and procedural differences in the Trademark Objection and Trademark Opposition. Some of the differences are discussed below:

• The common difference between Trademark objection and trademark opposition is that the Trademark opposition takes place after the stage of trademark objection. It means that when an applicant intends to register his Trademark, the examiner may object the application if he finds it identical or similar to an earlier trademark and if it isn’t objected the application moves onto next stage wherein it is advertised in the trademark journal for opposition from the third party. Therefore, the process of trademark objection and trademark opposition are subsequent processes through which an application for registration goes through.
• Another basic difference between the two is that the trademark objection is raised by the trademark examiner during the initial stages whereas a trademark opposition is raised by a third party who opposes the registration of a trademark. The trademark examiner is authorised to, after examining the intended trademark application, raise an objection if there is any. When it comes to opposition, any person can raise opposition against an intended trademark if it violates the terms for valid trademark registration.
• Whenever a trademark Opposition is filed by a third party, it is filed in the form of a notice of opposition that mentions the grounds on which the proposed Trademark is opposed whereas a Trademark Objection is filed in the form of a Trademark examination report. In case of trademark opposition the application of opposition is supported by evidence that lay down the reason why the proposed Trademark must not be granted registration or how does the proposed Trademark if given registration would violate the rights of the one who is opposing. In trademark objection, the examiner shall submit a report of the examination of the proposed Trademark, and the status of the report can be viewed online.
• There are prescribed time limit under which certain procedures must be completed in case of both trademark objection and trademark opposition. If an application for the registration of a trademark is objected, a reply must be sent to the trademark registrar within a month after receipt of the examination report.  In case the trademark objection reply is not filed within the prescribed time the registrar of Trademark has the authority to abandon the application altogether whereas, in case of trademark opposition, a reply to the trademark opposition should be filed within two months of receipt of the notice of opposition. Another thing to note here is that when you file a trademark objection reply, there is no need to pay a fee whereas, in case of submitting a reply to the notice of Trademark Opposition, the applicant is required to pay a fee prescribed under with the Trademark registrar.
• There is a provision of appeal in both the cases, i.e., Trademark Objection and Trademark Opposition. If a Trademark application has been rejected by the trademark registrar after submitting the reply to a trademark objection, then an appeal may be filed against such rejection by the applicant within the prescribed time whereas if the applicant is not satisfied with the judgment of the trademark opposition proceeding against the application, then an appeal can be filed against the judgement. Here the crux of the matter is that an appeal lies against the judgement in trademark opposition and appeal can be made against the rejection of trademark application in case of trademark objection.
• When it comes to the finality of the process of Trademark Objection, the Trademark is, if accepted, published in the trademark journal and is open for opposition from a third party whereas in case of Trademark Opposition, when the Trademark is accepted after the Trademark Opposition proceedings, then the judgement relating to the proceedings is communicated to the applicant and the opposing party.

The bottom-line, thus, is that even after so many differences, one common aspect between the two is that timely filing and proper research are the two ingredients required for Trademark Objection and Trademark Opposition.

Grounds for Trademark Objection and Trademark Opposition

There are grounds on which a Trademark Objection and Trademark Opposition can be raised by a trademark examiner and any third party respectively. These grounds are mentioned below:

Grounds for Trademark Objection– Whenever an applicant submits an application for trademark registration, it must be free of any errors or any incorrect information. Some common errors include incorrect details in trademark form or wrong filing of a trademark form. An objection can be raised by an examiner if he finds the intended mark to be in violation of the terms for a valid mark.

Apart from this, other grounds for objection could be deceptively similar marks. If an intended trademark is deceptively similar to an earlier trademark then, it can be objected. Deceptively similar here means that the Trademark is so similar to an earlier registered trademark that it may cause confusion among the general public. A trademark can also be objected if it lacks distinctiveness. A trademark must be distinct in nature so as to differentiate it between the other Trademarks.

If a trademark contains anything that has any offensive or obscene as a part of it, then it shall be objected. The proposed Trademark must be free of such obscene things or offensive words. The existence of a similar Trademark may also cause the proposed Trademark to be objected.

It is critical to know that once the reply has been filed, the examiner shall call for hearing with respect to the intended mark that has been objected. Once the examiner is satisfied with the reply to the objection, then only shall he forward the application of the intended Trademark to the next stage.

Grounds for Trademark Opposition– A proposed trademark can be opposed on the grounds if it is similar or identical to an already existing registered trademark. It can further be opposed if it is devoid of any distinctive character. The mark intended must contain distinct character so that it can be easily differentiated from other brand or company.

Another ground for the opposition could be raised if the intended Trademark is descriptive in nature or if the application made for the trademark registration is made in bad faith. If the mark is customary in the present language or if it is in the established practices of business, then it may also be opposed. The mark that either causes confusion among the public or if the mark is contrary to the law or if it is prevented by the law, it may be opposed.

The mark must not contain anything that might hurt the religious feelings of the certain class or section of people. The Trademark intended shall also be not prohibited under the Emblem and Names Act, 1950^[1]. All these grounds are good enough to raise opposition against an application for registration of a trademark. Thus, before a trademark is applied for, proper research must be done and the replies, if needed, must be filed diligently and carefully in order to avoid any hassle or wastage of time and money.

The Procedure Followed in Case of Objection

As soon as a trademark application is objected by the examiner the trademark status would display “trademark objected”. In this case, you must analyse what went wrong while filing the trademark application.

After analysing you must draft a trademark objection reply by providing justification to the Trademark applied for. All the necessary documents and evidence can also be attached with the reply supporting your claim. The response must be filed along with the supporting evidences within 30 days from the receipt of such objection. In case the reply is not filed within the prescribed time, it may cost you your money and time that you invested in that Trademark.

The examiner thereafter may or may not accept the response depending upon the justifications and the filing of the reply. In case of acceptance, the Trademark is published in the journal for opposition from third parties, or else it may be refused altogether for failing to satisfy the conditions.

The Procedure Followed in Case of Opposition

As soon as a trademark is opposed, the applicant should file a reply within two months after receiving such notice. The reply against the opposition is termed as a counter statement. In case an applicant fails to reply within the time period then the application may be abandoned.

The applicant may support his reply with evidence as in the case of trademark objection. The party which has opposed also gets a chance to reply to the claims made by the applicant within the prescribed time period. It is the stage where the opposing party gets the opportunity to refute the claims of the applicant.

Once the proceedings are completed, the registrar shall summon both the parties, i.e., the applicant and the opposing party, for hearing. Eventually, after hearing both the parties, the registrar shall take the call whether the intended mark is registered or rejected.

Conclusion

The Trademark Objection and Trademark Opposition are two of the important stages of a Trademark. A careful approach and good knowledge about Trademark are invaluable while applying for the registration of a trademark. In case one’s application is either objected or opposed even then he/she should not worry. A strong reply in a timely manner can help you sail through it the various procedures associated with it.