In the trademark examination process, there are two main things may happen one is trademark opposition and another one is trademark objection. People often confuse between the opposition and objection, here we are going to discuss about that and have a clarification about the difference and the process.
Basic difference to be noted is trademark objections will be raised by the trademark examiner whereas the trademark opposition will be raised by the third party. The third party may be any person in the public who have an objection towards your mark in any of the ways.
Apart from this conceptual difference, there are so many differences between these two things. Trademark objection is the part of the examination process, where the trademark examiner examines the application and issue the trademark examination report against your mark… Most of the applications are objected and that has to be responded back within 1 month from the date of issuance of the report.
Trademark opposition is filed by the third party after your mark got advertised from the trademark registry to the trademark journal. Trademark opposition is required to be filed within 4 months from the date of publication of the trademark in journal. The applicant needs to respond for the opposition within 2 months from the receipt of communication from the registrar of trademarks or the applicant can file the response once he is aware that his mark has been opposed.
The table below shows up the clear difference between the trademark opposition and trademark objection:
Difference between the trademark objection and the opposition:
|Trademark Objection||Trademark opposition|
|This will be issued by the concerned examiner.||Opposition will be from the third party.|
|No fees involved.||The applicant needs to file a reply along with the specific fees.|
|Have to be responded within 1 month.||To be responded within 2 months.|
|Appeal to be lied against rejection.||Appeal lies against the judgement.|
|Acceptance of the mark will be published in the trademark journal.||The judgement will be communicated to the parties.|
These are the basic difference between the objection and the opposition process. The advent of online trademark registration process in India improves the efficiency and the transparency in trademark filing. Registration of trademark goes through various stage of scrutinization
This process is applicable only for the non-text trademark application when the trademark contains a logo or figurative elements, Vienna code will be assigned by the registry i.e. “send to Vienna codification” which has been shown in trademark registry website. Based on the Vienna agreement, figurative elements are classified. With this trademark search will be conducted by the registry. Once this Vienna codification got completed, yet there is a long process for the registration to be completed.
Formalities Chk pass:
It is an initial stage of trademark registration process. Trademark registry will check about the basic requirements such as whether the POA has been uploaded or not, whether appropriate transliteration/translation has been filed if the trademark is not in English/Hindi. If these basic requirements are not fulfilled, then the status will be shown as “Formalities chk Fail”. After this process got completed, then the trademark application goes through the substantive examination. During this process, objections can be raised as per the trademarks act.
Marked for exam:
This status will be shown when the trademark application is assigned to an examiner in order to issue the examination report. Then the trademark registry website will show the status as “Marked for Exam”.
The trademark application will be scrutinised by the examiner to check whether it can be accepted to publish in the trademarks journal preceding the registration.
The following types of checks have to be done:
- Whether any similar goods or service marks is there on record;
- Whether the prescribed manner has been followed to file the application;
- Whether the trademark which has been applied be accepted for registration under the trademarks act;
- Whether any limitation, condition or restrictions is required to be imposed.
After this, examiner will issue a consolidated report mentions if any objections or else he will accept the application. It takes around 12-18 months of time period to issue the examination report.
The objections will be raised by the examiner or the registrar after scrutinizing the application. For example, objections are made under the section 9 of the trademarks act, when the examiner considers the trademarks to be descriptive of laudatory/generic goods which indicate the nature or quality of goods.
In order to overcome the objection it is indeed to show that the trademark is characteristically distinctive. The objection can also be avoided if the specific mark been developed a unique character because of extensive use.
It is required to submit a user affidavit with the cogent evidences which should show the uniqueness of the mark.
Under section 11, the objections are made by the examiner when there is any similar/identical mark is already present in the trademark registry. The examiner issues a computer generated search report which comprises the list of conflicting marks.
Issuing the exam report:
If the trademark application is accepted for publication, then the “Exam report issued” status will be shown. This is used to indicate that the trademark has been accepted in the initial examination report or after the objections been overcome by the applicant in the way of hearing or a written submission.
If the registrar or the examiner refuses the trademark application after hearing or considering the applicants response, then the status in the trademark registry shows as “Refused”.
The reason for the refusal may be, the third person is successful for opposing against the registration of trademark. For this, appeal can be filed under the section 91 of the trademarks act with the IPAB (Intellectual Property Appellate Board) within the period of 3 months.
Advertised before the acceptance:
If the trademark application has been advertised before the acceptance in the trademark journal by the registrar, then the trademark status in the trademark registry website will show as “Adv before accepted”. This allows any third party to oppose the trademark application within the period of 4 months from the date of advertisement in the journal.
Where an application is advertised before the acceptance and the opposition lodged during the opposition period is nil, then there is a requirement to be accepted by the accepting officer before the registration certificate is issued. If this is done, then the trademark status will be changed to “Advertised and Accepted” and then “Registered”. The certificate of registration is generally issued within 3 months upon expiry of opposition period.
If suppose after the advertisement of the trademark, a third party files an opposition to the registration of the trademark which should be within four months from the date of advertisement. Then the Indian trademark registry website will show as “opposed”.
Opposition from the third party arises only due to the following reasons, if there is a similar mark published in the journal or a mark is non-distinctive.
After a notice of opposition is filed by the third party, the status changes from “Advertised” to “opposed”. It is necessary to file a counter statement by the applicant within the time duration of two months from the notice of opposition. The trademark application will be abandoned if no such counter statement is received by the registry within the time period.
In some cases, the applicant files a requisition in order to withdraw the application voluntarily. When the hearing officer fails to accept the trademark, the applicant may withdraw the application.
The mark will be removed from the trademark registry then the mark will not be longer as trademarked.
The trademark registration certificate is issued by the registrar, then the trademark status will be as “Registered”. After the issuance of the certificate, the applicant becomes the registered owner and can use the encircled ® symbol next to the trademark. The registration is valid for 10 years and the renewal should be done before its expiry. Thus the difference and the process have been discussed.
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