Jay (ABC) 24 November 2014

Trademark objection query

Dear Experts

I had applied for TM for my company Brand Name. We have been using this for almost one year and has been used in multiple places(brochures, letterheads, flyers etc etc). Now there has been an objection raised. However, the report shows words which are not same as my company name. For example, if my company name is "beautysoft", the objection report shows names with "beaty" (no "U")

My questions:

a) Since the names are totally different, then why those appear in the TM report?

b) If defended, what are chances of winning and keep "beautysoft"

c) If I am not able to use "beautysoft", do I need to reinvest to do all the branding? Already people recognize with "BeautySoft". Any other way?

d) Will affidavit resolve this problem? How many hearings it usually takes to resolve the issue

Your advice and suggestions will be highly appreciated

Thanks

Regards

Jay

Reply Follow

5 Replies

Vidhi Joshi (Trademark Registration Mumbai | IPR Firm | Mumbai | Start Up Lawyer | Copyright Lawyer) 04 December 2014

We need to see the examination report first before commenting on anything.

Also, registry has complete discretion to object any mark which is similar in any way either phonetically or structurally.

You need to reply the examination report within in 30 days of the receipt pls note.

DR. DIMPLE JINDAL (ADV.) (Advocate) 09 December 2014

can say anything after reading the report....

Sivanthy (Lawyer) 16 December 2014

Dear Mr. Jay,

1. Examination report is to be verified and sections to be ascertained before filing a reply statement.

2 Proper reply statement can resolve.

3. Maximum two to three adjournments.

4. Reply statement to be filed before the registry within 30 days.

Zafarullakhan M. Pathan (Advocate & Trademarks Attorney) 19 December 2014

Better to engage IP Expert to follow up the matter before Trademarks Registry as Trademark is intangible asset wherein goodwill of your business are accrued.

Rupali Shah (Advocate & Trademark Attorney) 03 January 2015

Since mark being suggestive and having short length of use, needs to be tackled and dealt with carefully considering the absolute or relative grounds for refusal raised in examination report of Registry.

This matter to be handled with IP expert's advice.