Difference between Trademark Objection and Trademark Opposition

A Trademark is a kind of intellectual property which can be a name, logo, slogan and numerical or any symbol which distinguishes its goods or services from the other goods or services. The owner of a trademark can be an individual, firm, company or any other legal entity. A Trademark becomes an intellectual property only when it is registered and is used for commercial purposes. Hence, it provides certain rights which are known as intellectual property rights.

Once your trademark is registered, you can prevent any other person to copy, sell or distribute such trademark without the prior approval or permission of the owner.

• Trademark Objection
• Trademark Opposition

When an applicant apply for the registration of a trademark, its application might go through the following two phases. They are:

Brief Overview of Trademark Objection and Trademark Opposition

While applying for the registration of a trademark, if it is found that the proposed trademark is similar or identical to any other existing or earlier trademark and is not up to the mark as per the legal rules of Trademark Registration, it can be objected or opposed. Both the terminologies of “objection” and “opposition” might sound similar to you but both have different meaning and different legal remedy during registration of a Trademark. Hence, it is important for us to understand these terms. In this blog, we will closely study the points of differences between Trademark Objection and Trademark Opposition.

What is Trademark Objection?

Trademark Objection is a process where after filing application for registration of a Trademark, the examiner put objection on certain grounds. The examiner put such objection after examining your application for the proposed trademark. However, such objection is not denial or rejection of your proposed logo/wordmark. The Examiner seeks certain clarifications or explanations to mark it capable to get registered.

When the examiner objects on your proposed trademark, the status of your application will show as “Objected”. Post objection, an examination report is sent to your registered address and you are given a reasonable opportunity to clarify why your proposed trademark must get a valid registration.

Major reasons for Trademark Objection

The Examiner might object on the following grounds:

1. If the application for trademark registration contains any wrong or incomplete information. This may further include providing incorrect details in the trademark application form.
2. If the proposed trademark can make people confuse or can mislead the public about the already existing similar mark.
3. In some cases, application for the registration of trademark is filed by an Trademark Attorney on behalf of the applicant, then TM-48 along with attached Authorization Letter has to filed. But in case the applicant forgot to do so, then also an objection may arise

The applicant needs to file a reply in case any of the above objection arises. Once reply has been filed, the examiner may call the applicant for hearing in relation to the proposed mark which has been objected. The application for registration of trademark will proceed ahead only when the examiner is satisfied by the reply submitted in regard to the objection raised.

What is Trademark Opposition?

Once the hearing has been completed and the examiner is convinced about the validity of the proposed trademark, the status of your application for registration will change from “Objected” to “Accepted and Advertised”. Now, your trademark will be published in the Trademark Journal which will enable any third party to view the trademark. After viewing the trademark in Trademark Journal, if any third party has any issue with such trademark, it can file a Trademark Opposition against it.

Hence, a Trademark Opposition is filed by a third party who has any issues against the registration of your trademark.

Third Party includes any person which can be:

• Individual,
• Partnership Firms,
• Trusts,
• Companies,
• Owner of an earlier trademark application or registration which has a similar trademark for similar goods,
• Prior user

Major Reasons for Trademark Opposition

The major reasons for opposition of Trademark can be:

1. If the proposed trademark is similar or identical to an already existing registered trademark
2. If it is devoid of any distinctive character and is not easily differentiated from any other company or brand.
3. If the proposed trademark is descriptive in nature
4. If the application for registration is made with bad faith
5. If the mark either causes confusion among the general public or if it is against or prevented by the law
6. If the mark is customary in the present language or in the established business practices
7. The trademark is prohibited as per the Emblem and Names Act, 1950
8. If the mark is likely to hurt religious sentiments of any class or any particular society.

The applicant after receiving any notice of opposition must file a reply with proper evidences and proofs within two months of receiving such notice. This reply is known as Counter Statement. In case an applicant fails to reply within the specified time period, then his application may get abandoned. The opposition party will also put his evidences or grounds of opposition against the applicant and after hearing both the parties, the Trademark Registrar will decide whether to register or reject the proposed trademark.

Points of differences between Trademark Objection and Trademark Opposition

With the detailed overview above, you may have understand that:

1. The Trademark Opposition takes place after the phase of Trademark Objection
2. The Trademark Objection is raised by the Examiner of the Trademark itself whereas the trademark opposition is raised by a third party
3. The reply for Trademark Objection must be filed within 1 month of receipt of Examination Report. On the other hand, a reply of Trademark Opposition can be filed within 2 months of receiving the notice of opposition.
4. The applicant is not required to pay any fee for submitting the reply for Trademark Objection whereas a fee is levied for submitting the reply of Trademark Opposition.

Conclusion

Both Trademark Objection, and Trademark Opposition are very integral stages of a Trademark Application. However, good knowledge, experience and careful approach about Trademark Registration can minimize the stages of Trademark Objection and Opposition up to a certain level. In case your application for trademark registration is either opposed or objected, you should not worry and must take proper guidance from the team of experts at Legal Window which can guide you about submitting strong reply and various proceedings attached with it in a timely manner