Companies need trademarks to set themselves apart from competitors, get more people to know about their names, and protect their intellectual property. However, there are things that people don’t like about trademark filing, and companies often run into trademark objections. This blog post tries to educate readers about why people object to trademarks and how understanding these reasons might help people successfully register trademarks.
Businesses can take preventative measures to address these objections and improve their chances of obtaining a trademark registration by knowing the typical grounds for objections, such as lack of distinctiveness, similarity to existing trademarks, deceptive or misleading elements, prohibited marks, incorrect classification of goods/services, incomplete or incorrect applications, and procedural issues. Businesses wishing to build a powerful and safeguarded brand identity may find it essential to understand the possible traps and how to avoid them.
Common Reasons for Trademark Objections
1. Lack of Distinctiveness
Because it establishes whether a mark is qualified for registration and protection, distinctiveness is important in trademark law. When a trademark can differentiate products or services from those of rivals by uniquely identifying their source, it is said to be distinctive. Not very distinctive marks are usually regarded as non-registrable.
Non-distinctive trademarks include generic names that are widely used to refer to a category of product or service (e.g., “Soda” for carbonated drinks) and descriptive phrases that only describe a product or service (e.g., “Delicious Cookies” for baked goods). The primary purpose of a trademark, to identify sources, is not served by these kinds of markings. Without uniqueness, consumers are unlikely to link a mark with a single commercial source; hence, trademark protection is not available. Companies have to choose marks with caution, whether they are naturally unique or have become so via a lot of use and promotion.
2. Similarity to Current Trademarks
Distinctive trademarks are unquestionably important. A trademark that is too similar to another brand in use may confuse customers and violate the original owner’s rights. Considerations of phonetic, visual, and conceptual similarities are among the many elements used to assess trademark similarity.
A trademark may be deemed phonetically similar if, for example, its spelling or sounds the same. Designs, colours, or general looks may all lead to visual resemblance. Similar meanings or connotations of the markings result in conceptual similarities.
Examples and case studies of trademarks objected for resemblance include:
- Cadila Healthcare Ltd and Cadila Pharmaceuticals Ltd case: The Supreme Court of India decided that consumer confusion resulted from the trademark “Cadila” being misleadingly similar to the trademark “Cadila” used by another firm.
- Corn Products Refining Company and Shangrila Food Products Ltd case: The Supreme Court ruled that since the trademarks “Shangrila” and “Shangri-La” were sounded and meant similarly, the former was misleadingly similar to the latter.
These cases emphasise the need to ensure that trademarks are distinctive and original to prevent infringement and misunderstanding.
3. Misleading or Deceptive Trademarks
Trademarks that are misleading or deceptive falsely suggest that a good or service has a certain quality, origin, or trait. This ought to confuse buyers and is against the rights of the proprietor of the authentic trademark. Legal troubles can arise from trademarks that are not clear, as they could cause unfair competition, trademark abuse, and a lack of brand identity.
Deceptive or misleading trademarks include, for instance:
- False origin: A trademark indicating that a product is manufactured in a nation it is not.
- False quality: A trademark is one that claims a product has a specific quality or feature when it does not.
- False Association: False association is a trademark that implies a relationship or affiliation with another company or good.
In these cases, people might object and even go to court. For instance, if a brand said that a product was “All Wool” when it only had 20% wool, that would be seen as lying. Similarly, it might be false for a brand to say that a product is made in a certain country when it is not.
4. Prohibited Marks
Legally prohibited trademarks are ones that cannot be registered for protection. The kind of these markings and the legal foundation for their prohibition are used to classify them. Unapproved trademarks in Canada include:
- Section 9 marks are those that cannot be used or adopted in relation to a company. Examples include any royal family member’s arms or crest as well as the Royal Arms, Crest, or Standard.
- Official Marks are those that public institutions, such as colleges, universities, and government organisations, have approved and used. Examples include the Ontario Securities Commission marks, the Bank of Canada, and the University of Toronto.
- The Trademarks Act protects these marks, which include national flags, territorial or civic flags, and armorial bearings of international intergovernmental organisations.
These marks are forbidden as they go against morals, the law, or public order. For example, protecting the Royal Arms is necessary to preserve the dignity and respect of the monarchy. In the same vein, official markings are safeguarded to guarantee the legitimacy and integrity of public entities. These markings are forbidden because they are regarded as symbolic or holy, and using them might be seen as demeaning or deceptive.
5. Erroneous Goods/Services Classification
Trademark registration depends on appropriate Nice classification categorisation. Classification gone wrong might result in opposition and perhaps legal problems. Sometimes made errors include:
- Goods classified incorrectly are those that are classified more on the basis of their material than on their use or purpose.
- Services classified incorrectly are those that are categorised according to the kind of object utilised rather than the activity carried out.
Take these actions to prevent objections:
- Comprehending the Nice Classification: Learn the 45 classes of products and services, including the class headings and alphabetical listings.
- Identify the Correct Class: Sort your products or services according to their substance, function, or purpose.
- Spoken Succinctly and Clearly: Accurately and in language that the general public can understand, describe your products or services.
- View the Alphabetical List: To guarantee correct categorisation, see the list of products and services.
- Consult the Explanatory Notes: To learn the particular categorisation standards for each class, see the Explanatory Notes.
These actions may guarantee correct categorisation and prevent any objections.
6. Incorrect or Incomplete Application
Successful registration of trademarks depends on accurate and comprehensive applications. Incomplete or incorrect applications may be rejected, delayed, or objected to. Typical mistakes comprise:
- Documents that are missing: Do not turn in the necessary paperwork, like a use statement or a power of attorney.
- Incorrect Details: Erroneous or incomplete information, including misspelt names or wrong addresses.
Utilise these recommended practices to avoid these mistakes:
- Go over the application carefully: Verify the information again to be sure it is correct and comprehensive.
- Send along the necessary paperwork: Ensure all the paperwork—like a declaration of usage or a power of attorney—is included.
- Please check the application: Before submitting it, please check it to ensure it is correct and complete.
- Get expert assistance. For the best possible application, think about speaking with a trademark attorney.
Use these recommended practices to reduce the possibility of mistakes and guarantee a successful trademark application.
7. Procedural Problems
Procedural problems are common reasons for trademark opposition in India. These problems result from late paperwork submission or noncompliance with requirements. Procedural errors may greatly affect trademark approval, causing hold-ups or even rejection of applications.
Examples of Procedural objections include:
- Late Filing: Late filing is the trademark application not being filed in the allotted period.
- Noncompliance with formalities: Inaccurate or lacking paperwork, like a missing power of attorney or a wrong categorisation of products or services.
- Incorrect Filing: Inaccurate filing refers to submitting a trademark application with incomplete information or in an improper class.
Case studies of procedural objections consist of:
- Amritdhara Pharmacy v. Satya Deo Gupta: The trademark application was rejected because a power of attorney was not filed and because the formalities were not met.
- BDH Industries Ltd v. Croydon Chemical Works Pvt Ltd: The late submission caused the trademark application to be delayed for more than a year.
Procedural objections must be avoided; hence, all requirements must be followed, and paperwork must be submitted accurately and on schedule.
Conclusion
In conclusion, a number of grounds might give rise to trademark objections: lack of uniqueness, resemblance to already-existing trademarks, deceptive or misleading marks, forbidden marks, wrong categorisation of products or services, incomplete or erroneous applications, and procedural problems. Completely researching and preparing trademark applications is necessary to prevent these issues. Businesses may proactively solve these issues and improve their chances of obtaining a trademark registration by knowing the typical reasons for objections. Consulting a trademark attorney may also guarantee a stress-free and successful application procedure.
