Suppose you filed a trademark application, waited for 4-5 months, and then you get a notification with the words “examination report” and “objection.” At this point, most of the new applicants panic, but the key point to be noted is that an objection is not a rejection. Receiving the “objection” notification means the Trade Marks Registry is asking you to fix an error or is raising an issue related to the thing you trademarked.
Most of the businesses or individuals who are aware of the process handle a trademark objection reply themselves. Let’s explore this guide to know the objection reasons and how you can prepare a solid written reply.
What is Meant by Trademark Examination Report?
After the trademark registration, the application is forwarded to the Trade Marks Registry examiner, who checks the application. Application examination is a routine check, and an “examination report” is issued under Section 18(4) of the Trade Marks Act, 1999. This formal objection generally contains procedural defects or substantive objections under Section 9 or Section 11.
This trademark examination report lists all objections separately, along with the inconsistent marks, if any. Responding to each objection is legally mandatory, and even ignoring one can waste the whole reply. The application moves to publication in the Trade Marks Journal without holding the hearing if only the hearing officer is satisfied with your written reply. However, if not satisfied, the hearing will be conducted, but your written reply is still the best tool to settle the objection issue on paper.
But it is crucial to know that an objection from the Registry is different from an opposition. An objection is raised by the Registry’s examiner under Sections 9 and 11, whereas an opposition comes from the third party under Section 21.
How to Draft an Objection Reply?
The objection reply is nothing but a short legal letter that is submitted to the Registrar. The reply must be organized and factual. Follow these steps to track objection status and reply online:
Step 1: Note the Dates-
Start the objection reply process by marking the due date immediately.
Step 2: Simplify the Objections-
Prepare a simple list that must include the formal, Section 9, and Section 11. The order of each reply must be in the same format that appears in the report.
Step 3: Use a Clear Structure-
Make the format in such a way:
- Heading with the application number, class, mark, and date of the examination report.
- A short introduction stating that you are replying to the objection.
- Every objection will be responded to with a number.
- A closing prayer asking that the objections be withdrawn and approval for the trademark for publication is secured if a hearing is asked for.
Step 4: Argue Each Objection on its Merits-
- For Distinctiveness or Descriptiveness: Explain clearly why your trademark is not descriptive. It must hint at a quality rather than describing it directly. Further, highlight what makes it unique and how it will be judged as a complete phrase or design.
- For Section 11 Conflicts: Show how your mark looks, sounds, and feels different from the opposing mark. Also compare the business context and explain how the conflicting mark looks different.
- For Formal Issues: Simply correct the mistakes, like updating address mistakes or filling out an accurate form, and confirm that all issues have been fixed.
Step 5: Stay Real and Polite-
Avoid making dramatic claims, as it can be confusing for the examiners. Always claim the real facts with a clean case and facts that you understand well. Always avoid making claims that you cannot verify. An accurate short reply is enough to avoid long, confusing citations.
Step 1: File it Online-
Visit the IP India e-filing portal to submit the reply to your application, and the evidence must be submitted in PDF format.
Evidence that Strengthens Your Reply
Having valid evidence with actual facts is enough and a winning point for distinctiveness objections. These are the major pieces of evidence that you can provide to respond to the trademark objection in India:
- Proof of Use: Invoices, sales records, purchase orders, and dated packaging that clearly show that you have used the mark and since when, with a real date/ year.
- Advertising and Promotion: If you make any advertising or promotions, such as brochures, social media pages, or a website (with screenshots and dates), provide the marketing spend statements.
- Turnover Figures: Annual sales are under the mark, but they must be certified by a chartered accountant.
- Media Coverage: As evidence, you can show press articles, awards, and customer testimonials.
- Affidavit: A sworn statement from the proprietor or a director that must confirm that the evidence provided is accurate.
What Are the Criteria for Deadlines and Hearings?
That’s the major discussion for understanding the importance of deadlines and hearings while applying for trademark registration in India. It is as follows:
Objection Reply Deadline
As per Rule 33(4) of the Trade Marks Rules, 2017, you have 30 days to reply to the objection from the date you receive the examination report. Always file the reply before the last day to avoid technical glitches.
What if you Miss it?
Applicants often miss the deadline, which is a real risk. However, missing the deadline doesn’t automatically cancel it. As per the rule, the Registrar can mark the application as abandoned, but they might send you a notice to give you a chance to fix the mistakes. If your application ends up abandoned, you will have to reapply from scratch, paying all the fees again and losing your original filing date.
Hearing
Under Rule 33(6), a show-cause hearing is conducted if the hearing officer isn’t satisfied with your written reply. You can attend this show-cause hearing yourself, online or in person, as per the directions of the notice. To win the hearing, make a short summary with valid evidence. In case you don’t appear on the hearing day with evidence, the Registrar will mark the application as abandoned.
Frequently Asked Questions (FAQs)
Q1. Is a trademark objection the same as rejection?
Ans. No, a trademark objection is raised during the examination of the application by the trademark examiner. Meanwhile, rejection occurs after reviewing your response, which clarifies that the mark still cannot be registered.
Q2. Can I file the reply myself?
Ans. Yes, you can file the trademark objection reply yourself through the e-filing portal. However, appointing a professional becomes important when the conflict involves a well-known mark or if a hearing goes badly.
Q3. Do I need to reply to every objection?
Ans. Yes, it is mandatory to reply to every individual objection in the examination report within 30 days of receiving the report.
Q4. What if a Section 11 objection cites a similar mark?
Ans. The actual meaning of a Section 11 trademark objection is that the examiner found the similar or identical mark; therefore, it is tagged as a likelihood of confusion. Meanwhile, it is not a final application rejection, but only a call to respond.
Q5. What if my reply is not accepted?
Ans. The Trademark Registry will issue the hearing notice if the examination report reply is rejected. In this situation, the application moves from “objected” status to “Read for Hearing”
