Updated : June 18, 2024Replying to Trademark Examination Report
In this blog, we have explained the importance of the Trademark Examination Report in the Trademark Registration process and discussed how to file appropriate replies if objections have been raised in the Report against your application.
Trademark Examination Report and Trademark Objection Reply are crucial steps in the Trademark Registration process. Both these circumstances arise after the Trademark Application is filed. While a Trademark Examination Report is a document prepared by the Examiner of Trademark Application either accepting or raising objections against it, trademark objection reply is a written response filed to resolve such objection with valid arguments and evidence. While the Trademark Examination Report is prepared within 3 to 6 months of filing the Trademark Application, the Trademark Objection reply is filed immediately within a month after objections are raised and received in the Examination Report.
Trademark Examination Report & Objection - Overview
Trademark Examination is the immediate next step after the submission of the Trademark Application. We are already aware of the purpose for filing a Trademark Application, which is the registration of a trademark with the Trademark Registry Office. Trademark Registration is a legal process which safeguards significant Trademarks representing our brand in the market, viz, brand name, logo, product label, a peculiar combination of colours and so on.
Trademarks also help customers distinguish the products and services of our brand among a range of other similar products and services, so it has an extremely crucial role in building consumer loyalty. With such significant functioning, trademarks are rightly considered as assets for a brand and need to be protected against misuse, plagiarism and unauthorised use. This is exactly why trademark registration is sought by which the owner of the mark receives exclusive rights to authorise its use.
However, Trademark Registration is a long process which can be completed by following a series of steps, the first of which is filing the trademark application. Trademark Application is filed online on the Trademark Registry website ( www.ipindia.gov.in ) along with all the proper details of the proposed mark, its origin and its owner. Once the application is submitted, it is examined by a Trademark Examiner appointed for the purpose by the Trademark Registry Office. The Examiner prepares a detailed Trademark Examination Report in which he either accepts the proposed mark for further processing, or objects to it on valid grounds. We will understand the valid grounds of objection in further sections. You must note here that, it is on the basis of this report that the Trademark Registry decides whether the mark is suitable for registration or not.
What is a Trademark Objection Reply?
As discussed in the section above, if the Trademark Examiner, after examining your proposed mark finds it unsuitable for registration, will object against it on valid grounds. The grounds of objection will be mentioned clearly by the examiner in his Trademark Examination Report. Based on this Report, the Registry Office will send a notice to the applicant bringing to his attention the objections which have been raised, and giving him a chance of clarifying or resolving those through a written reply. This written reply is termed as “Trademark Objection Reply” and is crucial in the progress of a trademark application.
Valid Grounds for Trademark Objection:
The examining authority is entitled to raise objections against the registration of a proposed trademark on valid grounds mentioned in the Trademark Act of 1999. Specifically, the grounds are mentioned in Sections 9 and 11 of the Act. Let’s see what each of these sections really entail.
- Section 9 of the Trademark Act: Section 9 presents the Absolute Grounds for objecting the Trademark, and deals with reasons related to the inherent flaws in the mark itself instead of external factors related to its surrounding circumstances. These grounds of objection are primarily aimed at protecting the interests of the general public instead of any specific aggrieved third party.
- Section 11 of the Trademark Act: Unlike Section 9, Section 11 presents the Relative Grounds of objecting a Trademark. These are grounds which do not arise due to the inherent flaws in the proposed mark, but due to some external factor; for instance, the presence of a similar existing trademark, the proposed mark already classified as a well-known mark and so on. The purpose of this objection is to protect the interests of specific third parties which would face the consequences if the proposed mark gets registered.
Based on the above sections, let’s see what are the grounds for trademark objection under the Trademark Act. Here is a complete list:
- Non-Compliance with Procedural Formalities: Objection may arise if the trademark application fails to meet certain formalities or procedural requirements specified by the trademark office. This could include issues like improper classification of goods or services, failure to submit the necessary documents or fees, or not adhering to the prescribed format for the application.
- Objection u/s 9 of the Trademark Act: Objections may be raised if the proposed mark fulfils any or all of the conditions mentioned in Section 9 of the Trademark Act. These include lack of distinctiveness, generic use, misleading to the public, established in common trade practices, prohibited under a law, containing obscene matter, or resulting from the obvious shape of goods.
- Objection u/s 11 of the Trademark Act: Objections may be raised on the ground mentioned in Section 11 of the Trademark Act which includes similarity with an existing trademark, reservation as a well-known mark, or prohibition against using the proposed mark under any existing Indian Law.
- Applicant is Not the Rightful Owner: The applicant is not entitled to claim proprietorship to the trademark as he is either not the first user of the mark or has never used and has no Bonafide intention to do so in respect of the goods/ services mentioned in the Trademark Application.
- Prior Existing Rights of a Third Party: Objection may arise if there are existing trademark rights held by a third party that are similar to the proposed mark. If the trademark office finds that the application infringes upon the pre-existing rights of another business or individual, they may raise an objection to protect the interests of the existing rights holder.
Note that, even if the Trademark Examiner has accepted the mark in its report, the acceptance can be withdrawn later on specified grounds as mentioned below.
- The application has been accepted in error, or
- The conditions on which the trademark has been accepted have not been followed during the registration process.
- The application has been successfully opposed by a third party during the public inspection stage after publication of the mark in the Trademark Journal
- The Central Government has exclusively directed the withdrawal of acceptance granted to the mark [Section 23(1) of the Trademark Act].
When Should You File Trademark Objection Reply?
If the examiner issues a favourable report during the trademark examination process accepting the proposed mark for registration, no further action is required at the end of the applicant. The examiner will automatically forward the report to the Trademark Registry for further course of action.
However, if the examination report is adverse and raises objections to the proposed trademark, it becomes essential for the applicant to respond promptly to resolve these objections within the stipulated time frame. The response must be filed as a well-crafted and appropriately argued written reply within 30 days from the date of receiving a notice in this regard from the Trademark Registry Office.
The reply to the objection must include relevant evidence and arguments to support the registrability of the trademark and resolve the objections stated in the examination report. The purpose of this reply is to clarify and rectify any issues raised by the examiner, thus increasing the chances of the trademark’s successful registration. It is necessary to ensure that the reply is filed within the allotted time to avoid the abandonment of the Trademark Application.
Can the Timeline for Filing Trademark Objection Reply be Extended?
In the absence of a reply within 30 days from the date of the adverse examination report, the trademark application will be deemed abandoned. To prevent this, the applicant has the option to apply for an extension of time by submitting Form TM-M to the registrar through their appointed trademark agent. The application for an extension should include a valid reason justifying the delay in responding to the examination report.
Once the extension is granted, the applicant can proceed with drafting the trademark objection reply. This reply must be carefully and meticulously prepared, addressing all the concerns raised in the examination report. Providing substantial evidence, legal arguments, and clarifications is crucial to strengthen the case and increase the likelihood of overcoming the objections.
How to File Trademark Objection Reply?
To understand how to file a Trademark Objection Reply, you need to first understand the types of objections you may receive, So, there are primarily two kinds of objections you may receive for your Trademark Application. The first is the “Objection to Acceptance” which implies that the Examiner has completely unaccepted your mark and you need to persuade the authority to alter his decision. The second is the “Conditional Acceptance” which implies that the examiner has not entirely unaccepted the mark but has put forth certain conditions for its acceptance. Trademark Objection reply should be filed differently for both these circumstances with the ultimate aim of resolving the objection.
1. Reply to “Objection to Acceptance”
If the examiner has completely unaccepted your trademark in the examination report, you must objectively and positively counter it by quoting relevant provisions of laws and court judgments. The reply should be drafted carefully with a view of persuading and satisfying the examiner with respect to each and every ground on which he has objected to your mark. You can also attach supporting evidence in favour of your arguments, if necessary. Nevertheless, the reply to the examination report must be filed within 30 days of its receipt.
2. Reply to “Conditional Acceptance”
Under this circumstance, the registrar may find the application in order but require some modifications or amendments to accept it completely. According to the Trademark Act, the registrar has some discretionary powers under which he may refuse or accept the application subject to such modification, conditions and limitations as may be required. The onus is on the applicant to satisfy the registrar, which he can do by filing an appropriate reply to the examination report which comes up with conditional acceptance.
What is the Cost of Filing Trademark Objection Reply?
The cost of filing a Trademark Objection Reply can vary depending on the fees of your Trademark Agent / Attorney and the complexity of the objection. If you are filing the replies yourself, you may save some cost, but lose the legal expertise such documents usually require. This may hamper the chances of your Trademark Objection getting resolved and your application being progressed for registration. Here are some factors that can influence the overall cost of filing a Trademark Objection Reply:
- Trademark Attorney/Agent Fees: If you decide to hire a trademark attorney or agent to prepare and file the objection reply on your behalf, their professional fees will add to the overall cost. The fees charged by attorneys can vary depending on their experience, reputation, and the complexity of the case.
- Number of Classes: Trademark applications often cover specific classes of goods and services. If the objection pertains to multiple classes, there may be additional fees for each class.
- Communication and Correspondence Costs: If there is any back-and-forth communication with the trademark office during the objection reply process, additional costs may arise.
- Additional Services: In some cases, you might need to conduct further research or submit additional evidence to support your objection reply, which could incur additional costs.
It is essential to consult with a qualified trademark attorney or agent to get an accurate estimate of the cost for filing a Trademark Objection Reply in your specific case and jurisdiction. They can provide you with detailed information about the fees involved and the best course of action for your situation. Keep in mind that investing in a well-prepared objection reply can increase the likelihood of overcoming the objection and obtaining the desired trademark registration which can be highly beneficial for your brand in the long run.
What are the Consequences of Not Filing Trademark Objection Reply?
Filing a timely and appropriate Trademark Objection Reply is a critical step in the trademark registration process. Failure to respond to an adverse examination report within the specified timeframe, which is typically 30 days from the date of receipt of the Objection Notice from the Department, can lead to significant consequences for the progress of your trademark application. Some of the key repercussions of not filing a timely trademark objection reply are as follows:
- Abandonment of the Trademark Application: The most immediate consequence of not filing a Trademark Objection Reply is that the application will be declared abandoned by the Trademark Registry Office. This means that the application will no longer be considered active, and the applicant will lose the opportunity to pursue registration for the proposed trademark.
- Loss of Filing Fees and Time Invested: All the fees paid for filing the trademark application will go to waste if the application is abandoned due to the absence of a proper reply. Additionally, the time and effort invested in the application process will also be ruined.
- Need to Start the Process Anew: If the application is abandoned, the applicant will need to start the entire trademark registration process from scratch. This means filing a new application, paying the trademark fees again, and going through the entire examination process once more.
- Potential Trademark Infringement: If the applicant continues to use the proposed trademark without securing registration, they may unknowingly infringe on the rights of other registered trademarks. This could lead to legal disputes and possible financial liabilities.
- Loss of Brand Protection: Without a registered trademark, the applicant will miss out on the legal benefits and protection that come with trademark registration. This includes exclusive rights to use the mark in connection with the specified goods or services, as well as the ability to enforce those rights against infringing parties.
- Competitors May Register a Similar Mark: If the proposed trademark is abandoned due to the lack of a reply, it opens the door for competitors to potentially register a similar mark, causing confusion in the market and diluting the uniqueness of the brand.
Conclusion
The Trademark Examination Report plays a pivotal role in the trademark registration process, ensuring the integrity and distinctiveness of trademarks. By understanding the examination process and addressing any objections or issues raised in the report, applicants can enhance their chances of successful trademark registration. Leveraging the insights and guidance provided in this blog, individuals and businesses can navigate the examination phase with confidence, safeguard their intellectual property rights, and establish a strong foundation for brand protection and growth.
