Quick answer: A trademark objection is raised by the Trade Marks Registry in its examination report when it thinks your mark cannot be registered as filed, usually because it is descriptive or not distinctive (Section 9) or because it is similar to an earlier mark (Section 11). You must file a reply within one month of receiving the examination report, or the application can be treated as abandoned. A good reply answers each objection with legal arguments, evidence of use and, where useful, an amendment to the goods or services. If the examiner is not satisfied, a hearing is fixed.
Many applicants see “Objected” on the trademark status page and assume the brand is lost. It is not. An objection is the examiner’s first view, and a large share of objected marks go on to registration after a proper reply.
In this article
Absolute grounds: Section 9 objections
- Not distinctive (Section 9(1)(a)): the mark cannot tell your goods apart from others, such as a common word or a plain shape.
- Descriptive (Section 9(1)(b)): the mark describes the kind, quality, purpose or place of origin of the goods, such as “Fresh Bakes” for a bakery.
- Customary in trade (Section 9(1)(c)): words that have become common in the trade.
- Deceptive or offensive (Section 9(2)): marks likely to deceive the public or hurt religious feelings.
Relative grounds: Section 11 objections
Here the examiner lists earlier marks that look or sound similar and cover the same or related goods. Your reply should compare the marks as a whole, point out differences in look, sound and meaning, show that the goods or trade channels differ, and, where you have used the mark for a long time, rely on honest concurrent use under Section 12.
How to draft a strong reply
- Answer every objection separately, citing the section raised.
- Attach a user affidavit with evidence of use: invoices, advertisements, website and social media pages, sales figures and the date of first use. Use acquired through business can overcome a Section 9 objection (proviso to Section 9(1)).
- Narrow the specification if the conflict is only for some goods, by filing an amendment.
- Offer a disclaimer on a common word if the rest of the mark is distinctive.
- Get a consent letter from the owner of the earlier mark where possible.
- Cite relevant decisions of the Registry and courts on similar marks.
The reply is filed online on the IP India e-filing portal. You can track the status on the IP India trademark status page.
What happens after the reply
- Accepted: the mark is advertised in the Trade Marks Journal. Anyone may oppose within four months (three months, extendable by one). If there is no opposition, the mark proceeds to registration.
- Not accepted: a show-cause hearing is fixed, where you or your lawyer argue the case before the examiner.
- Refused: the order can be challenged before the High Court.
For the full journey from filing to certificate, see our guide to the trademark registration process in India.
Frequently Asked Questions
What is the time limit to reply to a trademark objection?
One month from receiving the examination report. If no reply is filed, the application can be treated as abandoned.
Can I use my brand while the trademark is objected?
Yes, you can continue using it, but you do not have the benefits of a registered mark until it is registered. Use with the TM symbol, not ®.
What is the difference between an objection and an opposition?
An objection is raised by the Trade Marks Registry during examination. An opposition is filed by a third party after the mark is advertised in the Trade Marks Journal.
Do I need a hearing after replying?
Only if the examiner is not satisfied with the written reply. Many objections are cleared on the reply alone.
Need a trademark objection reply drafted or a hearing attended? See Trademark & Copyright Lawyer in Delhi or call +91-8800669834.
This article is general legal information, not legal advice. Laws, rates and portals change, so check the current position for your case. — Adv. Mridul Jindal, Law Chambers of Mridul Jindal, Indirapuram, Ghaziabad.
