Relative Grounds for Trademark Refusal
Relative reasons for trademark rejection include conflicts with previous and well-known trademarks. However, sometimes a trademark can be registered on the basis of “honest concurrent use” when it is supported by evidence to that effect.
Trademark Search Process
The relative reason for a trademark rejection is a contradiction with the previous trademark. Therefore, prior to the opposition, the trademark examiner will conduct a trademark search for the same or similar trademark in connection with the designation of the same or similar goods and services. Trademark search is performed using a phonetic search for the trademark and some variants of the trademark. If the same or similar mark is found, the Mark Examiner will object to the rejection of the mark for relative reasons.
Identical or Similar Trademarks
Trademark law defines identical or similar marks as follows:
The mark is the same as the mark when duplicated without modification or addition, and all or all of the elements that make up the mark are not important. differences to the extent that the average consumer might not notice.
Similarities of Marks
The term similarity of marks must be understood as “deceptively similar”, a term that has been defined as “to the extent similar to another mark that it is likely to be confusing or misleading”.
The main factor in determining the similarity of marks is the possibility of confusion. For confusion to occur, it must be able to occur or appear in the mind of the average consumer. Learn more about the same or similar marks.
Overcome Dispute for Relative Reasons
The relative reasons for trademark rejection can be overcome by the trademark applicant submitting to the Trademark Office as follows:
The trademark applicant is responsible for goods or services other than those in which the mark cited as a trademark inconsistent in the trademark examination report differs from the applicant’s mark or the application is contained in the inconsistent mark in the examination report.
Removing Conflicting Goods or Services
If a trademark application is filed with a very broad specification of goods and services, the applicant may remove some of the goods or services and provide more detailed specifications to avoid conflicts. If using exclusions as a means of overcoming opposition, you must ensure that all goods and/or services that are deemed identical and similar to the quoted mark are excluded from your application.
Trademark Owner’s Consent
If the owner of the mark agrees in writing to register the proposed mark, the objection for relative reasons can be resolved. You must provide a consent form that includes the trademark owner’s allegations of the same/similar trademark as a result of registration, and the goods/services that the cited trademark owner agrees to.
Honest Concurrent Use of Trademark
Trademark applications may be granted in opposition to previous trademarks if trademark applicants can provide evidence that they have established sufficient goodwill or common-law interests in their trademark. Trademark hearing officers are considered primarily when common law rights arise as a result of good faith acceptance, continued and simultaneous use of the trademark, and the owner of the earlier rights does not impose a ban on the applicant.
Division of Trademark Application
A trademark application can be submitted for the division of the trademark application by submitting Form TM-53. After the split, everyone
Divisional applications are treated as separate applications with the same filing date. If certain classes exist without conflict at the time of splitting, one can register those classes.
Names that Cannot be Registered
Section 13 and 14 of the Act provide that trademarks containing specific names cannot be registered. Trademarks containing words commonly used for a single chemical element or compound in connection with a chemical or chemical cannot be registered.
Trademarks that falsely suggest a partnership with a living person may be rejected by the registrar without the consent of such a living person. Similarly, a mark that falsely suggests a connection to a person who died within 20 years of the application for registration may be rejected by the registrar without the consent of that person’s legal representative.
The Trademarks Act 1999 provides for various grounds, both absolute and relative, that should be noted before a trademark is approved for registration. Where a trademark is likely to lead to confusion or deception, the prohibition on the registration of a said trademark is absolute and this is intended to protect the interests of buyers.
Similarly, a subsequent trademark that is similar or identical to the previous one cannot be registered. This is true even in cases where the goods/services represented by the latter and the former are identical or similar, or where the public is likely to confuse or deceive. In these two cases, the mark will be refused registration.
Hi, I am Noorshaba Mirza and I am a self taught blogger, I am a Law student and I love writing and learning as “Learning never exhausts the mind.” and I have written many research paper. As writing express and connect to various things so never stop exploring and spreading knowledge.