How to Reply to a Trademark Objection (Examination Report)

After a trademark application is filed, the Trade Marks Registry examines it. If the examiner sees a problem, the status on the online register changes to “Objected” and an examination report is issued. Many applicants, especially those who filed through online packages, do not notice the report, or do not reply properly, and the application is treated as abandoned.

This article explains what an objection means, the common grounds, how to reply, and what happens next.

What an examination report is

• It sets out the examiner’s objections to registration, under the Trade Marks Act, 1999 and the rules
• It may raise absolute grounds (problems with the mark itself) and relative grounds (conflict with earlier marks)
• It is sent to the applicant or agent and published on the Registry’s online records
• A reply must be filed within the time allowed, generally one month from receipt of the report; if no reply is filed, the application can be treated as abandoned

Common grounds of objection

Ground	What it means	Typical response
Lacks distinctiveness (Section 9(1)(a))	The mark cannot distinguish your goods or services, for example a common word or a simple shape	Show how the mark is distinctive as a whole, or show acquired distinctiveness through use
Descriptive (Section 9(1)(b))	The mark describes the kind, quality, purpose or place of the goods or services	Argue that it is suggestive rather than descriptive; show use and reputation; consider a disclaimer of the descriptive part
Customary in the trade (Section 9(1)(c))	The word is commonly used in the trade	Show that the combination or presentation is distinctive
Likely to deceive or cause confusion (Section 9(2))	The mark may mislead the public about the nature or origin of goods	Explain the actual use and limit the specification if needed
Similar to earlier marks (Section 11)	Identical or similar marks for similar goods or services are already on the register; these are listed as cited marks	Show differences in look, sound and idea; differences in goods, trade channels and customers; prior use; honest concurrent use; or consent from the cited mark’s owner
Formal requirements	Specification too wide or vague, wrong class, missing documents	Amend the specification, class or documents as required

For the reasons that most often lead to refusal, see common reasons for trademark rejection.

How to reply

1. Read the report fully: note each ground and each cited mark, with its status, owner, goods and services
2. Check the cited marks: some may be abandoned, removed or for unrelated goods; this alone can answer an objection
3. Draft a point-by-point reply: address every objection, with reasons and, where useful, earlier decisions of the Registry or courts
4. Attach evidence of use: where you rely on use, file an affidavit with invoices, advertisements, photographs and sales figures, showing the date from which the mark has been used
5. Offer amendments where sensible: narrowing the goods or services, adding a disclaimer, or correcting the class can overcome an objection without weakening your core rights
6. Consider a consent letter: where the cited mark belongs to a related party or a willing owner, a written consent can help
7. File on time: through the online filing system, as a reply to the examination report

After the reply

Outcome	What it means
Accepted	The application is ordered to be advertised in the Trade Marks Journal
Show cause hearing	The examiner is not fully satisfied and fixes a hearing, usually held online; attend with arguments and evidence
Accepted after hearing	Advertised in the Journal, sometimes with conditions such as a disclaimer or limitation
Refused	A refusal order is passed; remedies include review and appeal to the High Court

After advertisement, any person can oppose the application within four months. If there is no opposition, or the opposition fails, the mark is registered. See trademark opposition.

Practical points

• Check the status of your application on the online register regularly; do not rely only on emails
• If you filed through an agent who no longer responds, act quickly to protect the application
• A strong reply is specific: it deals with each cited mark and each ground, not general statements
• Evidence of real use carries weight, especially for descriptive or common words
• Prevent objections at the start with a proper search and a well-chosen mark. See how to check trademark availability and trademark classes explained

Frequently asked questions

What happens if I do not reply to the examination report?

The application can be treated as abandoned. Revival may be possible in limited situations, but it is far better to reply in time.

Does an objection mean my trademark will be refused?

No. Many objections are overcome by a well-reasoned reply or at the hearing. An objection is the examiner’s preliminary view.

Can I use the mark while the objection is pending?

You can generally continue to use it, but use the ™ symbol, not ®, until registration. If the objection is based on a similar earlier mark, consider the risk of an infringement claim from its owner.

Is a hearing always held?

Only if the examiner is not satisfied with the reply. Many applications are accepted on the reply alone.

ചുരുക്കം (Summary in Malayalam)

Trademark അപേക്ഷയുടെ status ‘Objected’ ആയാൽ examination report ലഭിച്ചിട്ടുണ്ട്; നിശ്ചിത സമയത്തിനകം (സാധാരണ ഒരു മാസം) മറുപടി നൽകിയില്ലെങ്കിൽ അപേക്ഷ abandoned ആകാം. Section 9 (വിവരണാത്മകം, വ്യതിരിക്തതയില്ലായ്മ), Section 11 (സമാനമായ മുൻകാല മാർക്കുകൾ) എന്നിവയാണ് പ്രധാന കാരണങ്ങൾ. ഓരോ objection-നും ഓരോ cited mark-നും പ്രത്യേകം മറുപടി, ഉപയോഗത്തിന്റെ തെളിവുകളുള്ള affidavit, ആവശ്യമെങ്കിൽ specification ചുരുക്കൽ, disclaimer, consent letter എന്നിവ നൽകുക. തൃപ്തിയില്ലെങ്കിൽ hearing ഉണ്ടാകും; അംഗീകരിച്ചാൽ Journal-ൽ പ്രസിദ്ധീകരിക്കും, 4 മാസം opposition-ന് സമയം.

This article gives a general overview of examination and objections under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. Procedures, time limits and Registry practice are revised from time to time; for accurate and current requirements, refer to the Act, the rules and the Trade Marks Registry. The article is not advice on any particular case.