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Babies N'More   20 January 2016

Tm registration objection raised

Hello All,

I am a wholesaler and trader of readymade kids garments. I had applied for TM Registration of my business Babies n'More - The Kidz Klothing Kompany in the year 2014. A simple search on the TMR / Iponline website verified that no other company has been registered under this name. 

In January 2016 I received the Examination Report from the Registrar of Trademarks stating that objections were raised by 4 entities as follows:

1) Entity 1: 

    Objection raised For Conflicting Mark: Baby

2) Entity 2: 

    Objection raised For Conflicting Mark: Baby (Logo)

3) Entity 3: 

    Objection raised For Conflicting Mark: BabynBaby

4) Entity 4: 

    Objection raised For Conflicting Mark: Baby & Me

My doubts / queries are:

  1. With reference to Entities 1, 3 and 4, they have objected to the use of the word 'Baby' but nowhere in my name or logo has the word 'Baby' been used. Does it make a difference if the word BABY is spelt in its plural form i.e. BABIES?

  2. With reference to Entity 2, the baby logo used by them and the one used by me are completely different. I have had mine personally designed and have not used a generic logo or picture. My logo has a picture of a baby in it while their logo only mentions the word BABY in it without any picture.

  3. Entity 1’s TM Application year is 2010, entity 3’s is 2013 and Entity 4's is 2014, Since entity 1,3 and 4 have raised an objection on the word Baby and all 3 of them have used the word Baby in their names in some form or the other, shouldn’t Entities 3 & 4 also face an issue with using the word Baby since the same was already registered by Entity 1 in 2010?

Please help me with the above queries and advise me on my further course of action.

Thanks and Regards.



Learning

 5 Replies

Mayur shikhare   21 January 2016

Please Note now that you have received the TM 5 opposition, you should file you should file your counter statement in Triplicate on Form No. TM 6. You should also gather evidence about the use of your trade mark the earlier the better and the amount that you have spent on the advertisment and other expenses that you have incurred. 

Now that they have objected you should only think about how you should defend your case rather than wondering why 1,3 and 4 have not objected to each other. In all probability they must have filed their opposition and after hearing they must have lost or the matter is pending. 

Babies N'More   22 January 2016

Mayur, Thank you for your response and advise. Is it ok to file   the counter statement directly on my own or is a lawyer required?

Mayur shikhare   25 January 2016

It is advisable to take legal assistance due to technicalities

Kavya B Shashidhar   30 January 2016

Rightly said by Mr. Mayur shikare. In most of the cases it happens that the mark that is conflicting with ours, if already is not "Registered" would also would have received a similar objection as ours. However, that is not of much concern to us. 

As I could understand from your words, the Examination Report puts forth objection under Section 11 that same or similar mark are already on record of the Trademark Registry. If this is true, you will have to file a "Examination Reply" stating why those conflicting mark of BABY, BABYn BABY, and BABY&ME  are not the same as your logo. You can elaborate on how your logo is different.

This is usually done by an attorney/lawyer as they have the appropriate agent code under the Trademark Registry. Also they would be in a better position to draft the reply. This reply is then uploaded on the Registry's website. 

Hope this helps. 

Kapila Tanwar   05 September 2017

‘Objection’ is the expression of disapproval by the authorities. After scrutinising the trademark application, the examiner may raise the objection in the examination report due to various valid reasons which do not meet the legal norms of the Trademark Act.

Grounds for Trademark Objection

Generally, trademark objections are raised on the absolute or relative grounds. But a trademark application can be objected under the more than one ground for refusal. Following are some grounds on which examiner can object the trademark registration application:

  • Deceptive Trademark

All the trademarks which are capable of deception of the public by way of any reason related to its use, quality, and character. A deceptive trademark misleads the public about the related goods or services. Such trademarks are deceptively misdescripttive by a vague descripttion of the goods and services which are of nature to create confusion.

  • Existence of identical trademark

After examining the trademark application if the examiner found the trademark similar to any existing trademark then objection may raise because registering the two identical marks may lead to confusion on the part of public. But if the new trademark application is to register in the different class to the earlier mark then it would not consider as identical goods.

  • False specifications of goods or services

If any detail of goods and services specified in the trademark application is vague then examiner may raise the objection. A trademark application must be made in respect of goods or services in a particular class. If goods fall in more than one class then, in that case, it must be grouped together according to class number.

  • Descripttive Trademark

Trademark examiner may raise the objection when registrar considers the trademark of descripttive nature. Lack of distinctiveness in the trademark creates the dilemma in public. Descripttive trademarks are merely descripttive which identifies the characteristics of the goods or services. They are not entitled to trademark protection and all the benefits go along with.


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