How to compare your mark with the objection-conflicting-marks?
This post would try to summarize the technicality of the Trademark’s Examination Objection process and how to counter the conflicting marks and support your application.
As a owner of your trademark, you are absolutely right in believing that your Trademark application for registration is distinctive.
You may have found your mark’s distinctiveness during your Trademark Search stage. Your Distinctive trademark will not give you any conflicting marks. Otherwise, if your conception is similar or deceptive then there is a high probability that your trademark application will face an objection during the examination.
Therefore, it is highly advisable to fine tune your trademark’s adoption as a coined and unique mark during the conception. So that, your Mark is not similar mark or prior used any other party.
Well, if your trademark search did result with conflicting marks;; but you still have gone ahead and filed the Trademark application.
Please note that under such circumstances, and during the examination stage your Attorney or your trademark agent would receive an Objection notice as result of the examination report generated by the learned Trademark Examiner of the Trademark Registry, Objection from the Trademark Examiner alleging that your trademark is violating any one of or all of the following provisions of the Trademark Act 1999
Section 9: Absolute Grounds for Refusal
Section 11: Relative Grounds for Refusal
Section 12: Concurrent use not Eligible.
Please note that the examination report conducted by the designated trademark examiners, who may be a fresh or an experienced examiners. So, it is obvious that, depends on their expertise, their search results vary due to omissions and negligence.
Only the Examiner knows, what keyword he has framed from your trademark and what other conditions like, genericness of the word, class, description of goods, word’s language origin, translation, and transliteration words he uses to decide in the KEYWORD. In my guess, most searches may be done using the three letters wildcard search. Ex: ABC*. That could be one of the reasons, why most trademarks are getting objections.
As such, in many cases, the Trademark Examiners do a lot of mistakes, that is the reason they fail to cite objection-conflicting-marks as a result or contradictory report with numerous conflicting marks. This issue would arise up during the show cause hearing. The Hearing Officer itself would surprise to the search report and the efficiency of the examination report. In many cases, the conflicting marks are in-active, either they are abandoned, refused or not renewed.
Well, any case, you are being the applicant, you shall support your Trademark Agent, or an Attorney so that you a detailed analysis report on the examination report. The following elements may be considered while doing your analysis report. This analysis report not only helps you to understand the distinctiveness of your mark, rather details the ingredients of your mark’s structure and nature. How the reported conflicting marks can be rejected for their non-identicalness and in-active status against your valid trademark. So, your mark can be Accepted and Advertised by the Hearing Officer.
Comparison of Conflicting marks, consider the following technical elements.
- Application Date: Check the application date of the conflicting mark
- User Details: Check the user detail of the conflicting mark, whether it is “Proposed to be used” or already in use.
- Class Number: Check whether the class number is similar.
- GOODS/SERVICES: Check Whether Goods or Services Category
- TYPE: Check whether Word/Device/Label mark
- Name: Check the name of the applicant, whether company or proprietor
- Market: Check the Address, City and the State. (if State is different, you demand area restriction for your mark. Also, check if the conflicting mark is already restricted to a particular state).
- Status: Check whether Registered/Objected/Abandoned/Not Renewed/Opposed.
- Description: Compare the Goods description to your mark’s
- Text: See how much similar the text is
- Genericness: No Exclusive right for prior users, unless it is well-known.
- Look Design similarity, Color, Shape, Prefix and Suffix elements, creativity,
- Details: Check the Record of the Trademark for legal disputes, any abnormal records on the trademark.
- Examination Report: Check their examination report, check for conflicting marks in that trademark. Most importantly, check if the conflicting marks in their examination report are Active, if yes use them for defence and concurrent use argument.
SUBMISSIONS TO HEARING OFFICER:
You must assist your Trademark Attorney or Trademark Agent with all use documents so that they are very confident in representing your mark for its use and credibility. Most importantly, the documents which identify your company and the mark; documents, the government issued and certified. User Affidavit, Taxed Invoices, Advertisements and etc..
Trademark Public Search page: https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx (while doing the search here, ensure, you use all the preconditions such as “Start With” “Contains” or “Matches With”
Trademark All Classes Search page until July 2017: http://www.tmsearcher.in
For opinion on Trademark Search Report, objection-conflicting-marks analysis to your Examination Report, you may please feel free to revert.