similar mark result
In trademark registration it is quite obvious that many individual applicants may skip the procedure for doing a prior search of the word mark, before making an application with the trademark registry. A trademark search, under the public search link should be conducted by applicant, not only in the single class, but also under other classes than the one class the applicant is interested, trademark might exist in other relevant classes. It helps to check, if there are similar marks registered by parties.
Especially, 50 % similarity is highly possible if word mark are constructed with common names, and generic words. Probably, deceptive or similar marks might exist. Because, most human being thoughts are quite same to a quite extent.
Well, what happens, if an individual applicant does not conduct a prior trademark search and stills files a mark. Then, there is a high probability that the trademark registrar would send an objection notice for the similarity issue. Because, the general tendency in that most marks are based on generic and common words used by individuals. If so, the registrar of trademark would seek a representation from the applicant on the account of Section 11 and Section 12 of the Trademark Act, 1999
For example, the objection would say…
The Trademark Act, 1999 and Trade Mark Rules 2002 and the trade mark applied for is open to objection under the following sections :
1) The Trade marks -which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from these of another person; which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or the characteristics of the goods or service;
2) The trade Mark application is open to objection on relative grounds of refusal under section 11 of the Act because the same/similar trademark(s) is/are already on record of the register of the same or similar goods/services. The detail of similar trademark is enclosed herewith
Same as provided in Sec.12, a trademark shall not be registered if, because of its-identity with an earlier trademark and similarity of goods or services covered by; the trademark; or its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the trademark.
Hence the application is liable to be refused. Accordingly, you are requested to submit your response/submissions, if any, along-with supporting documents and receipt of this examination report or you may apply for a hearing.
Please note that if no reply is received or request for a hearing is applied for within the time of one month, the said application shall be treated to have been abandoned for lack of prosecution under the Trademark Act 1999 and there after the status of application in the computer database shall reflect as abandoned.”
Having received such objection letter from the trademark office, it is advisable that following procedures could be followed to get the applied mark to your rights.
– Do a trademark search with all relevant classes of goods/services and generate a report
– Identify, how many objections, oppositions, abandoned and registered categories are there in the reports
– If you find your mark similarity to any of the section, your strategy of reply should differ. (For example, If there are many objections, it is highly possible that chances of getting your mark would be challenging.)
– Be determined to justify that your trademark conception is constructed based on your product and market, where your goods/services are sold.
– Within specified time, send a reply to the registrar with the a help of a trademark attorney.
– Await for the reply/action/response.
– Based on the reply, you shall decide to apply for hearing.
– Upon the result of the hearing, the mark might face yes or no reply. If yes, it would proceed for publishing, if no, you should modify your mark at the earliest.
However, do keep in mind that, even if the register accepts your mark application based on the reply/hearing, you could expect a opposition/litigation from the owners of similar trademark once after it is published for public view.
Hence, always take an expert advise for an amicable process of owning your trademark and successful registration. Of course, do preliminary work, before deciding your mark.
Good luck with your Trademark rights.
Article written for the IP -Blog by Devarajan G – Trade Mark Attorney. PGN WISSEN & CO
Case Scenario :
The attached report is a result of mark “Super”, which resulted 800+ marks filed. Out of which, around 650 marks are either abandoned, refused, objected, opposed. That reflects nearly 70 % mark applications are filed without prior search or a preliminary advice obtained from the Trademark Attorney, which should not be neglected.
Should I Hire an Attorney to Help Me File My Trademark Registration? – https://t.co/t1RCCXPY1D
time, normally 5 years in most jurisdictions. In the case of a trademark registration, failure to actively use the mark in the lawful course of trade
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