We at company360.in get numerous calls on daily basis with respect to Trademark objection reply many customers tend to focus
on price without realizing the quality and impact of the work might have on their brand.
In many recent cases, we have seen how your trademark prosecution history plays a key role and in future god forbid your
trademark registration lands up in legal soup.
Whatever you write or your attorney writes on your behalf while responding to Trademark objection is vital for your Trademark.
Now you might be thinking how is this possible, your attorney filed a reply and you got your trademark successfully registered!
Bingo – work done. This is what I wanted ! So all’s well that ends well –
WELL that’s not the END yet … it’s is not that simple! Let us now understand the difference between filing a TM objection reply and
filing a proper reply is important can make or break a brand with following example.
In recent case of M/S Allied Blenders & Distillers … vs Shree Nath Heritage Liquor Pvt. … on 1 July, 2014,
the role of submissions made during trademark prosecution came into picture. Trademark prosecution is basically the
legal term comprehensively used for entire process that happens after trademark filing.
In this case the plaintiff (OFFICER’S CHOICE) filed a case to restrain the defendant over the usage of mark
COLLECTOR’S CHOICE.
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At the onset it seems that both the marks share only one common dictionary word that is choice and overall the combination
of words are very different from each other. But here the defendant, i.e the brand owner of the mark Collector’s choice did
one mistake during their Trademark Objection Reply that instead of highlighting their mark’s distinctiveness they emphasized
more on how the trademark registry has taken on record other similar marks like OFFICERS’S CHOICE and therefore, their mark
should also be registered.
Even though they got their mark registered, but when the plaintiff OFFICERS’S CHOICE objected their
registration in court and sought the restrain/injunction against them. The counsel of the OFFICERS’S CHOICE also highlighted the
Trademark objection reply stating that how COLLECTOER’S CHOICE themselves were unable to cite the distinctiveness of their mark –
(now that’s one reckless Objection reply by Collector’s choice team).
So it’s not always enough to get the trademark registered but is also important to get it done correctly at every step.
Even a small wrong argument in submission of Trademark objection reply may cost a bomb in future.
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Always remember when you are a small fish these things don’t matter much and you might hire an inexperienced lawyer
just to get work done. However, later when competition is stiff you might get shot down with expert law knowledge as
it happened in OFFICERS’S CHOICE Vs COLLECTOER’S CHOICE and a growing company couldn’t achieve its milestones because of
inexperience in handing Intellectual Property as trivial as Trademark.
In short always be very serious while filing you Trademark Objection Reply because an ill advice from a inexperienced lawyer might get you your trademark but make you loose your brand in long run.
