Trademark Objection: Process, Documents & Fees

Just because a trademark objection has been issued does not mean your application has been rejected. The Registrar can object once the application has been examined along with supporting documents and earlier marks on record. You are apprised of the objection received from the Registry through the examination report.

If you have received an examination report, then you need to scrutinize the objection and prepare your response from a legal perspective. The trademark objection reply will assist you in providing reasoning for why your mark should be allowed to proceed as well as in addressing any objection raised regarding distinctiveness, similarity, etc.

A trademark objection refers to a raised objection against the acceptance of the trademark application by the Registrar. Under Rule 33 of the Trade Marks Rules, 2017, the Registrar examines the application and searches earlier trademarks to determine whether there exists an identical or deceptively similar mark.

In case the Registrar has an objection concerning the acceptance of your application, then the Applicant is issued an examination report indicating the objection and grounds for objection. The application will not be further examined unless the applicant is provided with an opportunity to respond.

The trademark application could be objected to for different reasons, which could alter and change based on the situation.

Some common grounds could include:

• The mark lacks distinctive nature

• The mark is merely descriptive of goods or services

• The mark is identical or deceptively similar to an earlier mark

• The mark may cause confusion against an existing trademark

• The application contains a provision that requires clarification

• Registrar needs proof of acquired distinctiveness or use.

A reply to trademark objection under section 9 deals with absolute bases for refusal. This means that even if the trademark meets all requirements but has no distinctive character or is descriptive in nature, a trademark may be objected to.

On the other hand, a trademark objection under section 11 refers to relative grounds for identification, which may involve cases where the trademark is similar to an existing registered trademark and likely to cause confusion about the origin of goods and services. What approaches will be taken depends on the cause of the objection, which is mentioned in the report.

Make sure that you do not file a generic reply to trademark objection under section 1 or section 9 without looking at the specific objection and the facts.

The trademark objection process involves 7 steps in total. Given below are the details:

Step 1: Examination of the Application

The registry will go over your application and conduct the necessary Trademark Search

Step 2: Examination Report

If there are issues raised by the Registrar, you will get this examination report, which mentions all the objections.

Step 3: Reviewing The Objections

Review all the reasons mentioned for raising the objection to your Trademark application along with the Marks that were cited by them.

Step 4: Preparation of Reply

You need to put forth reasons that will address all the objections along with relevant legal provisions & supporting evidence.

Step 5: Filing of Response

Once ready, file your response as per the time period. After submission, you have to wait to hear from the authorities.

Step 6: Further Examination or Hearing

In case the Registrar is not satisfied with the reply given by the applicant or proprietor, they can grant an opportunity for holding a hearing. The Registrar considers your response and submissions to make their decision.

Step 7: Decision making

When the Registrar considers your response and submissions, and there is no objection to trademark application and is satisfied, they will pass an appropriate order.

You have one month from the date of receipt of the examination report to respond. In case you fail to respond within this period of time, then the registrar will treat your application as abandoned according to rule no. 33 (4).

So don’t wait if trademark is objected till the last minute to see the exam reports. Please make sure that once you get the reports, you go through them properly.

While you draft reply to trademark objection, your reply will have to address the issues made in the exam report directly and will not simply say that your mark is distinctive.

Depending on your situation, your response may include the following:

• Meaning and nature of your mark

• Arguments about its distinctiveness

• A comparison between trademarks referenced

• Explanation of your mark’s differences in terms of appearance, sound, meaning

• Information about what goods or services you offer

• Proof of prior use, if applicable

• Necessary supporting papers and statements

• Legal arguments that cover the references made

It depends on the objection as well as the arguments one is aiming to put forward. The following documents may be required:

• Examination report

• Information on trademark application

• Documents confirming identity of the applicant and authorization

• Proof of trademark usage (if required)

• Invoices and records of sales

• Advertising and marketing material

• Website or Social media material

• Affidavit of use

You should simply submit the evidence that is pertinent to the case only.

If you fail to react to the examination report within the time frame prescribed, your application may be deemed abandoned. The rules state clearly that in case of no response from an applicant within a month following the receipt of an examination report, the application shall be considered abandoned.

This means that in case of objected in trademark, one should respond to the report promptly, instead of waiting for it to vanish.

After the submission of your objection reply, the registrar evaluates the response. Acceptance of the reply will enable the application to move ahead in the acceptance and advertisement phase. If the reply is not accepted or shows the necessity for a hearing, the registrar might arrange for a hearing.

In case a hearing is set, you must be prepared by way of submissions that will counter all outstanding objections, queries, and concerns raised by the registry.

The cost of trademark objection reply depends on the complexity of the examination report, the number of objections and the evidence required, and whether further hearing assistance is needed.

Note: Apart from professional fees, you will also need to pay government fees and other necessary fees. You should check the latest fees at Brandregistration.co.in.

After your trademark has been duly registered, it remains valid for ten years from the date of filing. If you wish to maintain your trademark registration, you can file for renewal and have your trademark protected for another ten years.

However, it is crucial to note that a pending application that has become the subject of an inquiry does not share the same status as a registered trademark. Therefore, you should first clear the counter-argument and proceed with obtaining the registration before you can rely on the provisions of trademark renewal.

The answer is yes, and this is allowed under certain conditions and depending on the phase that your application is at as well as the type of change proposed. Namely, in accordance with Rule 37, it is possible to apply in TM-M format for fixing an error before obtaining the registration, but this will be subject to the relevant requirements.

However, it should be noted that amendments cannot be used to make impressive and profound changes in the trademark you initially applied for, and the goods and services specification cannot be changed as well.

Usually, there are no specific monetary penalties merely due to the registration office raising an examination objection. The most immediate consequence is procedural in nature. Failure to respond within a certain period may lead to your application being deemed abandoned.

This is why you shouldn't ignore an examination report. Delay or a failure to respond could mean that your application will not advance and you will have to explore the possible legal remedies based on the application status.

The renewal can be applied for within the maximum period of up to one year before the expiration of the existing registration. The renewal itself is usually done with the help of the TM-R form along with paying the necessary fee.

If you do not apply for renewal in time, the Registrar has the right to take the Trademark Renewal off the register. The law also provides for a restoration process in some cases after removal for nonpayment of the renewal fee.

Services for examination reports and trademark objections can be obtained by people from all parts of India. Some examples of state-specific trademark objection services include:

• Trademark Objection Delhi

• Trademark Objection Mumbai

• Trademark Objection Bangalore

• Trademark Objection Chennai

• Trademark Objection Kolkata

• Trademark Objection Hyderabad

• Trademark Objection Ahmedabad

• Trademark Objection Pune

The main legal principles behind trademark objections remain the same since all trademark objections are governed by the central trademark law. The jurisdiction of the registry administering the trademark applications differs according to the relevant rules.

Almost every industry may need trademark registration objection services, as trademark examination is based on the marks and their classification, reputation, and relevant laws rather than the industries.

Examples of industries that can benefit from this service may include:

• E-commerce and other online businesses

• Food and beverage industry

• Pharmaceutical and health services industry

• Fashion and clothing business

• Cosmetics and personal care industry

• IT and software industry

• Manufacturing industry

• Education and training services

• Restaurants and hospitality industry

• Business consulting and professional services

When responding to trademark objections related to the nature of your products and services

Brandregistration.co.in helps out right from examination-report analysis till drafting and filing your answer. We help you in understanding the objections raised against you as well as locating the proper evidence and drafting the answer for the objections raised by the Registry.

If you need additional assistance with Trademark Registration, we can help you with all related filing and documentation work.