Previously on “Back Stage Pass to Trade Mark Registration”, we talked about the smooth process of trade mark registration. In today’s “Inside Scoop” I will further guide you through the scenario where most people will inevitably face during the course of their application, OBJECTIONS! Oh no, is this the end of the world?! How can this happened?! Etc. would undoubtedly be the first question that pops into your mind if you are the one facing the objection. Hold that thought for just a moment, take a deep breath and calm down. Now, for those of you who have read my previous article on “Back Stage Pass to Trade Mark Registration”, you would probably recall a flowchart where on the right side of the flowchart where the word “Objection” is located. Moving down from that point to 2A where the word “Trade Mark Appeal” stood is where you stand and to decide on whether to proceed to initiate the appeal or just give up completely. Now, if you are mentally ready, kindly continue reading as this might overwhelm your mind a little. 

Objections, also known as CD70 to most legal firms and IP firms comes in different types depending on the laws and regulations in which the trade mark is in contravention with. On a side note, please note that when we inform you that your trade mark has been objected it doesn’t mean we are the who has objected your application, but it is the Registry that has objected to your application. Trust me, there are people who are so shocked by the news which led them into thinking that we are the one who objected their application. Anyways, objections comes in different ways where being the most common ones are direct reference and lack of distinctive character (Section 10(1)(d) and 10(1)(e) of the Trade Marks Act 1976). These sections usually come together as grounds of objection but it could also come on its own depending on the nature of the applied trade mark. Sometimes, Section 10(1)(c) on not an inventive word would also come in together with the above sections which is fairly straight forward. This is what I personally like to call the “Trinity” objection.

Direct Reference

If I have to pick one, I would pick this as the most common ground of objection. Why? People would create their mark anyway they like as long as it gets to “promote” their products or services. When in reality a trade mark is not supposed to “promote” your goods and services, but it should be the source of origin which distinguish your products and services from others promoting similar products and services. Without the knowledge on the necessary criteria, people would just produce all sorts of “promotional” trade names and assume that is registerable.

For example, I am a fruit seller and I want everybody to taste my signature sweet and juicy apple so I named my shop “Juicy Apple Sweet”. Can I get my brand name registered? Of course a big fat NO! This is a typical direct reference case where the name is directly referring to the products and services itself which is not allow under the trade mark laws. Therefore, if you are new in the business and wish to smoothly register your brand name, avoid this kind of name at all cost! Please note that designing the name in a fancy way does not change the fact that it still reads and sound the same!  

Lack of Distinctive Character

This particular grounds usually go side by side with direct reference as mentioned above since if your mark is descriptive it automatically loses the ability to distinguish. However, it could also arise on its own where the trade mark holds no direct reference but still lack sufficient distinctive character to distinguish its origin from other similar undertaking. Why unable to distinguish you might ask? Please do bear in mind that there are millions of filed and registered trade mark within the register, although your trade mark may not be substantial enough to cause a confusion in the public, but it could still unable to distinguish itself from other similar products or service provider due to one main reasons – your trade mark is just too COMMON and GENERIC!

For example, it is the current trend to use short form or abbreviation as trade mark such as MPH (bookstore), APT (salon) and various other famous brands. As a new brand name without sufficient history or background, such simple and generic name would undoubtedly attracts an objection based on lack of distinctive character. What makes you so sure that those alphabets belong to only you and not others? As such, except to those which have been in used for years or even decades, it is always recommended to stylize your alphabetical or even numerals only mark into something special or illegible.

Not an Invented Word

This is a fairly straight forward ground where the Registry is simply alleging that your trade mark is just words commonly found in a dictionary. Such an objection usually arise for marks consisting of misspelt or coined words which are either generic or descriptive. Take the example from above, “JUICYAPPLESWEET” or “Juicy Appl3 Sw33t” would still be a mark to attract such an objection regardless of how you coin and misspelt it.   

To summarize, if you intend to proceed with the appeal, you have to respond to each and every one of these grounds (preferably with evidence) and have faith that the examiner would accept your argument and evidence. Of course, legal professionals would have better ways and means to ‘persuade’ the examiner using their fancy words via their appeal submission. Therefore, if responding to objections is not your forte, it is best appoint the professionals to handle it on your behalf. There are various other kinds of objection from the Registry which are yet to be discussed. As I do not want to bring you to boredom land and to avoid overloading your brain with information.  I shall refrain from touching further grounds of objection here until my next update. To those who managed to read till this line thus far, you have my deepest gratitude for your support and patience.

OBJECTIONS ARE NOT THE END OF THE WORLD AS IT CAN BE OVERCOME

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