Relative Grounds for Trademark Refusal
Relative Grounds for Trademark Refusal
Relative grounds for trademark refusal is by reason of conflict with prior trademarks and well-known marks. However, sometimes a mark could be registered on the basis of “honest concurrent use” when supported by evidence to that effect. In this article, we look at relative grounds for trademark refusal in detail.
Trademark Search Process
Relative grounds for trademark refusal are by reason of conflict with prior trademarks. Hence, prior to objection, the trademark Examiner conducts a trademark search of same or similar trademarks in respect of same or similar description of goods and services. The trademark search is performed using phonetic search on the basis of the mark and a few variants of the mark. In case any same or similar trademark is found, then an objection is raised by the Trademark Examiner on relative grounds for trademark refusal.
Identical or Similar Trademark
The trademark laws define identical or similar trademarks as under:
A mark is identical with the trade mark where it reproduces without any modification or additions, all elements constituting the trade mark or where, viewed as a whole it contains differences so insignificant that they may go unnoticed by an average consumer
Similarity of Marks
The terms similarity of trademarks is to be construed as “deceptively similar” which expression has been defined “as so nearly resembling that other mark as to be likely to deceive or cause confusion”.
The main factor in determining similarity of marks is likelihood of confusion. For likelihood of confusion to exist it must be probable or should arise in the mind of average consumer. Know more about identical or similar trademarks.
Overcoming Objection under Relative Grounds
Relative grounds for trademark refusal can be overcome by a trademark applicant by submitting to the Trademark Office as under:
The trademark applicant can submit a counter to the effect that the trademarks cited as conflicting marks in the trademark examination report are different than the applicant’s trademark; or goods or services mentioned in the application are different than those covered in marks cited as conflicting in the examination report.
Removing Conflicting Goods or Services
If a trademark application is filed with very wide specification of goods and services, then the applicant could remove some of the goods or services and provide a more precise specification to avoid conflict. When using exclusion as a means of overcoming a objection, it is necessary to ensure that all the goods and/or services considered to be both identical and similar to the cited mark are excluded from the application.
Consent from Trademark Owner
An objection under relative grounds can be overcome if the trademark owner agrees to the registration of the proposed trademark in writing. A consent letter containing assertion of trademark owner over the same/similar trademark(s) by virtue of registration and the goods/services to which the proprietor of the cited mark is consenting must be provided.
Honest Concurrent Use of Trademark
If the trademark applicant can demonstrate based on evidence that they have built up a sufficient amount of goodwill or common-law right in their mark, then the trademark application maybe allowed with conflict to an earlier mark. The Trademark Hearing Officer will mainly considered if common-law rights have accrued by reason of honesty of adoption, continuous & concurrent use of the trade mark, and without the owner of the earlier right having taken any prohibitive action against the applicant.
Division of Trademark Application
The trademark application could request for a division of the trademark application by filing form TM-53. After division, each
divided application would be treated as separate application, with the same filing date. On division, if there are certain classes with no conflict, then such classes can be registered.
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