Trademark Objection Received? Step-by-Step Reply Process

Receiving a trademark objection does not mean that your application has been rejected. It means the Trade Marks Registry has identified legal or procedural issues that must be answered before the application can proceed.

Under Rule 33 of the Trade Marks Rules, 2017, an applicant should generally submit a trademark objection reply within one month of receiving the examination report. Failure to respond may result in the application being treated as abandoned.    

Received a trademark examination report? Remind Legal can help you prepare and file a properly supported reply.   

Quick Summary

What Is a Trademark Objection?

A trademark objection is raised when the examiner finds that an application may not satisfy the requirements of the Trade Marks Act, 1999. The reasons are communicated through a trademark examination report.

An objection is different from an opposition. An objection is raised by the examiner during examination, while an opposition may be filed by a third party after the mark is published in the Trade Marks Journal.

Section 9 vs Section 11 Objection

Understanding the objection is necessary before preparing the reply.

The statutory grounds are available under Sections 9 and 11 of the Trade Marks Act, 1999.

Step-by-Step Trademark Objection Reply Process

Step 1: Review the Examination Report

Download the examination report from the IP India official portal and read each and every objection carefully. Check and verify the application number, cited trademarks, legal provisions and various procedural requirements. 

Do not rely only on the application status shown on the portal.  

Step 2: Calculate the Reply Deadline

Note when the report was received by the applicant or authorised agent. Rule 33(4) of the Trade Marks Rules, 2017 provides a one-month response period.

Applicants should avoid waiting until the last day because incomplete or inaccurate documents or technical issues may affect the process of filing.      

Step 3: Analyse Every Objection

For a Section 9 objection, determine whether the mark is inherently distinctive or has acquired the distinctiveness through continuous use and promotion.

For a Section 11 objection, compare the applied mark with each cited mark. Consider their overall appearance, pronunciation, meaning, goods or services, relevant consumers and channels of trade.

A reply should explain the differences clearly instead of merely stating that the marks are dissimilar.

Step 4: Collect Supporting Evidence

Depending on the objection, the applicant may submit: -

• Invoices and purchase orders
• Advertisements and promotional materials
• Website or social-media records
• Packaging, labels and product photographs
• Sales and the advertising expenditure details
• Business registration documents
• Earlier trademark registrations
• Consent or coexistence documents, where relevant

The evidence must be genuine and consistent with the date of use claimed in the application.

Step 5: Draft a Reasoned Reply

A proper reply to a trademark objection in India should contain: -

• The application and applicant details
• A summary of the objections
• A paragraph-wise response
• Arguments under the applicable provisions
• Comparison with cited marks
• Supporting documents and relevant decisions
• A request to accept and advertise the application

The reply should address every objection. Unsupported or copied arguments may weaken the applicant’s case.

Step 6: File the Reply Online

File the reply and supporting documents through the IP India trademark e-filing system. Keep the filing acknowledgement and regularly monitor the application status.

No separate official fee is ordinarily prescribed merely for filing a reply to an examination report. However, other applications, Form TM-M requests and professional assistance may involve applicable fees.

Step 7: Attend the Hearing, If Required

If the examiner is not satisfied with the written reply, then the Registry may schedule a show-cause hearing. The applicant or authorised representative can present the various arguments and clarify the evidence.

The Registrar may accept the application, impose conditions or refuse it through an order.

Can the Reply Deadline Be Extended?

TM-56 was used for certain extension requests under the earlier Trade Marks Rules, 2002. It is not the current form.

Under Rule 109 of the present Rules, an extension request is made in Form TM-M. The Registrar may allow an extension of up to one month when there are sufficient circumstances exist. Approval is discretionary and not automatic. Therefore, applicants should try to file the substantive reply within the original one-month period.

What Happens After the Reply?

If the reply is accepted, the application is published in the Trade Marks Journal. A third party may file an opposition in Form TM-O within four months from publication.

If opposed, the applicant must submit a counterstatement within two months of receiving the opposition notice. If no opposition is filed or the opposition is decided in the applicant’s favour, the application may proceed towards registration.

Conclusion

A timely, evidence-based reply can prevent abandonment and help the application to proceed towards publication. Since every objection basically depends on the facts and cited marks, the response should be prepared specifically for the application.

Contact Remind Legal for assistance with drafting the objection reply and representing your application before the Trade Marks Registry.

Disclaimer: This content is for general information and does not constitute legal advice.