How to Overcome a Lack of Distinctiveness Trademark Objection | Trademark Objection
A trademark refers to a mark that can be expressed graphically and can be used to differentiate goods or services of one person from those of others. Trade Mark objection is made under Section 9 if the Registrar thinks that the mark is descriptive of goods, indicating quality or nature of goods. A trademark is said to be merely descriptive if the mark describes a quality or characteristic of its goods or services.
Section 9 states that:
Absolute grounds for refusal of registration:
1) The Trademark cannot be registered if –
(a) It is lacking any distinctive character or not capable of distinguishing the goods or services of one person from another;
(b) It consists of indications which may serve in trade to identify the quality, quantity, purpose, values, geographical origin or the time of production of the goods or services;
(c) It consists exclusively of marks or indications which have become customary in the current language or in the established practices of the trade;
2) A mark cannot be registered as a trade mark if —
(a) It consists of any matter that might hurt the religious sentiments of any class or section of the Indian citizens;
(b) Its nature is such that it can deceive the public or cause unnecessary confusion;
(c) It comprises or contains inappropriate or obscene matter;
(d) Its use is prohibited under the Emblems and Names Act, 1950
3) A mark cannot be registered as a trade mark if it consists of —
(a) The shape of goods which is necessary to obtain a technical result;
(b) The shape of goods which results from the nature of the goods themselves;
(c) The shape which provides considerate value to the goods.
After receiving this sort of objection your trademark will only be accepted if you can supply information or evidence that demonstrates the objection should be withdrawn, or if the trademark examiner finds information to satisfy the Registrar that your trademark is sufficiently distinctive when applied to the nominated goods or services such that it would be appropriate to withdraw the objection. The aim of the evidence is to show that, despite the objectionable nature of the trade mark, it was already associated with a particular trader’s goods or services.
To be distinctive of distinguishing the goods, there may be some inherent qualities or distinguishing characteristics in the mark itself, which make it distinctive or capable of distinguishing the goods of one person from those of others. Here are some steps that can be kept in mind to overcome a lack of distinctiveness trademark objection -
1. One must look at the mark in isolation from any special surrounding circumstances and without regard to any extrinsic evidence of any such circumstances and to consider whether looking at the mark by itself in that way, it could be said to be capable of distinguishing the goods of the applicants from similar goods of other traders.
2. While analyzing a mark, one has to look at the word, not in its strict grammatical significance as it would represent itself to the public as a whole who would look at it and form an opinion of what it signifies.
3. A descriptive mark may be granted registration if it has acquired a secondary meaning which identifies it with a particular product or as being from a particular source. The factors that are taken into consideration in this case are the length of use, volume of goods marketed, use of an advertising slogan, extent of service provided, use in combination of other marks, evidence of trade and consumer surveys and advertising expenditure.
4. Certain words which are used in common parlances should be avoided as they have a high chance of being rejected. Also, never use any mark which is already a well-known one and is popular among the public. Try to make your mark a distinct one. The goal should be to make it as different as possible from the rest.
Trademark objection is a serious situation and should be taken so by any company to avoid confusion and unnecessary wastage of time and should abide by the law.
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