Trade Mark: Objection and Replies to Registered/Unregistered Trade Mark

 Name – SHREYA S.K. PANDEY

College - LAW COLLEGE DEHRADUN faculty of UTTARANCHAL UNIVERSITY

What is a Trade mark?

In general, Trade mark is a mark that distinguishes one good or service from another. 

Section 2(zb) of Trade Marks Act, 1999, defines Trade Mark as a mark that is capable of being represented graphically and which distinguish the good and service of an individual from other and it includes the shape of the good, its packing and combination of colours.

What is a Registered Trade mark?

According to Section 2(w) of The Trade Mark Act, 1999, a registered Trade Mark is a mark that is actually included on the register and which remains in force.

Classification of goods and services for registration

Goods and Services are classified into various classes for simplifying the process and to distinguish every good and service easily. There are in total 45 Classes of Goods and Services out of which Class 1 to class 34 are for goods and Classes 35 to 35 are for services. These classes are provided in the Fourth Schedule of Trade Mark Rules, 2002. 

Sr. No.	GOODS	Sr. No.	SERVICES
1.	Chemicals used for science, unprocessed artificial Resins and unprocessed Plastics, etc.	35.	Advertising, Business Administration, and Management
2.	Varnishes, Paints and Anti- Corrosion Substances, Metals in foil and powder form, etc.	36.	Financial and Insurance Services
3.	Cosmetics, Hair Oils, and Lotions, Cleaning Preparations, essential oils, soaps, etc.	37.	Building Construction and Repairs
4.	Greases, Industrial oils, Lubricants and Fuels, etc.	38.	Telecommunications
5.	Pharmaceuticals, Medical and Sanitary preparation, dental wax, etc.	39.	Transportation and Storage of Goods and Products
6.	Goods of Metal, Ironmongery and Hardware products	40.	Treatment of Material
7.	Equipment and Machinery	41.	Education, sporting activities, and Entertainment
8.	Hand-operated devices and tools, cutlery, etc.	42.	Computers, Scientific and Technological Services
9.	Scientific, Electrical, and Technological Apparatus	43.	Hotels and Restaurants, temporary accommodation.
10.	Medical and Surgical Instrument Apparatus	44.	Agriculture, Medical, and Beauty care
11.	Heating, cooling, and refrigerating Apparatus	45.	Personal and Social Services, legal services
12.	Land, Air, and Water Vehicles
13.	Explosives and ammunition.
14.	Precious Metals, Stones, and Jewelry items
15.	Musical Instrument
16.	Paper Goods, stationery Products, and Printed Materials
17.	Rubber and Plastics Goods and Products
18.	Products made of Hides and Leathers
19.	Various non-metallic building materials
20.	Furniture and other precious household Articles
21.	Kitchen Utensils, Households Appliances.
22.	Ropes and Cordage, and Stuffing materials
23.	Threads and Yarns for uses in Textiles
24.	Textiles, Table covers, and Fabrics
25.	Apparels and Clothing
26.	Fringes and Fancy Goods and Products
27.	Floor Coverings and Wall Hangings
28	Toys, sporting and sports goods
29.	Meat and Processed Food items
30.	Auxiliary Food and Beverages item
31.	Agriculture and Horticulture products
32.	Beers, Light Beverages, and Fruit juices
33.	Wines and Spirit except for beers.
34.	Tobacco Products and smokers articles

For eg.

1. Visit https://ipindiaonline.gov.in/tmrpublicsearch/   

It is a website of the Controller General of Patents Design and Trade Marks for Public Search of Trade Marks.

2. Type “Suzuki” in Value Column.

3. Type 42 in the class column as it comes under technological and industrial services.

4. A list of various documents will open in which Suzuki had received Trade Mark.

Objection for Registration of Trademark

Objection to register a trade mark may arise under

1. Section 9 where there is absolute ground of refusal to register a trade mark;

2. Section 11 talks about the relative ground of refusal to register a trademark;

3.  General objection to any kind of clerical error

• How to check objection

1. Visit https://ipindiaonline.gov.in/eregister/eregister.aspx (website to check registered trade marks and application status) to see whether there is an objection filed against the application.

2. Click on “Trade Marks Indexes” on the left side of the page.

3. The page will direct to the “Search Index of Registered Trade Mark/ Application”.

4. Select the “Index Type” as “Pending Marks”.

5. Write the name of your Goods or Services in the “Search Column” and “Class” for which you are applying for.

6. Write the code shown and click on the “Search” button.

7. The list of “Matching Trade Marks” will open.

8. Click on “Trade Mark No” and it will show the status of the application.

9. If the status shown is “Objected” then click on “View Examination Report”.

10. The Examination Report, in brief, tells the Section and Clause under which objection has been raised.

Reply to objection

1. After going through the examination report thoroughly draft a reply.

2. You may, also, take the help of other replies which was filed under the same section from the other Trade Mark examination report.

3. Look carefully at the cases referred to and the points used to counter the objection.

4. Now type “Trade Mark Login” in the web search.

5. Open the first link.

6. Log in by typing your user id and password (or Digital Signature).

7. A page for Comprehensive Online Filing of Trademark will open.

8. Click on “New form filing” on the right side of the page.

9. Choose “Miscellaneous Reply” on this bar.

10. Click on “Reply to Examination Report”

11. After typing the “Application Number” below go for the “Proceed” button.

12. Choose the mode of hearing, either Video Conferencing or Physical.

13. Then, upload your reply and Click on “Submit”.

14. Click on “Update Application/Forms” on the left side of the page and then select “Drafted Forms”.

15.  Click on “Select” and then choose “Sign Document”.

16. Click on “Sign Files”.

17. Attach the “Signature” and then type your “User Pin”.

18. After this, your reply will be submitted successfully.

The Remedy to Unregistered Trade mark: Passing off

Whenever, there is no registration of Trade Marks remedy for infringement is available under Sectio 135 of the Trade Marks Act, 1999, which talks about relief for passing off.

This remedy is available when a person uses the trade mark of other which is not registered but was in use for a long. If the person infringing was unaware of the fact that such trade mark was in use or had no reasonable grounds to believe that such trade mark was in use then he had done no damages and no relief will be passed against him.

The party asking for damages under passing off have to prove -

Misrepresentation of his trade mark;

Goodwill attached to his trade mark, and;

Damages occur to him due to the actions of another party.

In the ITC Ltd. v. Nestle India Ltd. (Famous Magic Masala case), the issue, in this case, was whether there arise a case of passing off by Nestle India Ltd for using an expression “Magic Masala” for selling its “Maggie Magic Masala” (now Maggie Masala-e-Magic) while ITC Ltd. was trading “Sunfeast Yippie! Noodles Magic Masala”. While ITC was trading it from 2010 Nestle started it from 2013 onwards. ITC wants the court to pass an injuction ordered to prevent Nestle from using this name to trade their masala.

Madras High Court by referring to the Section 9(1)(c) of the Act, stated that no generic words can be used as a Trade Mark, and in this case, both the words “Magic” and “Masala” are common generic words and these words give no one any trade marks right. The word is not distinctive in nature and is highly common to the food industry. Court stated that there is no case of passing off against the defendant.