Trademark Objection Reply or
Trademark Examination Reply in India
What is Trademark Examination or Trademark Objection ?
After filing an application for trademark registration, you get
Trademark receipt which specifies one number
known as Trademark application number, which is used to track your
trademark application various stages, the
trademark officials specifically trademark examiners, analyse the
application which is comprised of basically
two types of examinations one is formal examination and other one is
substantive examination, generally formal
examination is related to basic checking of the Trademark application
filed which is once cleared is marked as
Formality check pass, after this stage, the trademark filed is marked
for examination and if the trademark
status shows as objected it is said to be substantially examined , this
substantial examination is also known
as Trademark objection or Examination report where your applied mark is
duly searched by the Trademark examiner
which may comprise of similarity search and also legal examination of
your Trademark application in view of
section 9. After conducting their search they write down their opinions
about the mark, mainly point out the
reasons why the applied mark shall not be registered. All these
objections along with relevant trademark
provisions are stated in Trademark Examination Report. These objections
must be replied by the applicant within
1 month from the date of receipt of the examination report. This reply
is generally known as trademark examination
reply or Trademark objection reply.
What is Examination Report
The Trademark Registry examines a trademark application within a period of
three to six months to one year from the
date of filing.An Examination report is issued in case the Registry has
some objection/s with the registration of
the Trademark application filed, which may relate to the question of the
trademarks distinctiveness, not meeting
the qualifications under the act, existing similarity with prior existing
trademark registrations, and filing of
supporting documents.
If a mark is accepted during examination, the trademark office will issue
an acceptance order and the trademark
will be published in the journal. However, a trade mark is rarely accepted
without objections. If registration of
a trade mark is objected by the examiner in the examination report,
applicant or his agent must respond to it within
one month from the date of receiving the examination report.
A well crafted Trademark objection reply ensures that mark may get
accepted by the examiner without proceeding for
hearing, Any trademark objection reply must focus on objections raised in
view of mark applied and cited marks, the
answer to objection raised must be specific , supported by relevant
examples of like trademark cases and must also
be supported by recent relevant Trademark caselaws which supports your
point of arguments. Below is the quick summary
of what shall be the content of any Trademark objection reply or
Examination report reply.
-
An answer to the objections raised, supported by legal prepositions,
relevant sections of Trademark Act along with
arguments crafted around the objections so raised
- Relevant case laws or precedents of the trade mark office and
-
Supporting documents to prove inherent or acquired distinctiveness.
-
An affidavit of Usage along with supporting documents could also be
filed along with the reply to the examination report
which shows that the trademark has acquired distinctiveness and is
being associated with the goods/services of the applicant
due to its prolonged usage.
Filing of a correct and specific reply is pertinent step to secure
trademark registration in India. In case, the objections
are not being answered to the satisfaction of the trade mark office
through the response submitted to them, the applicant can
avail an opportunity of hearing before the Trademark Registrar, where
he/she can present submissions orally. The hearing is
generally conducted by the Assistant Registrar or Senior Examiners of
Trade marks.
It is always advisable that applicant of the trademark hire an attorney
for drafting a reply as they are better experienced
with relevant trademark laws and caselaws that are pertinent to file the
reply efficiently.
In case, an applicant or his/her agent satisfies the objections of the
Trademark Office via response or hearing, the examiner
or assistant registrar, whoever has heard the matter, orders the
publication/advertisement of the Trademark in the Trademark Journal.
IMPORTANT UPDATE
DEADLINE AND EXTENSION TO FILE RESPONSES IS NO LONGER APPLICABLE FOR
CURRENT CASES.
Previous extension will get over on 30th May 2022- for old pending cases.
Now extensions are not granted. We need to be prompt in filing our
responses, Counter statements and evidences.
Trademark Publication
Once a Trademark application is accepted or all objections are being
removed, it gets published in the Trademark Journal.
What to do in case I have missed my Trademark Examination Reply
deadline?
Your deadline is calculated from actual receipt of the examination report.
Hence in case the report, for example was issued on
12 December 2021 but is dispatched and received on 17 March 2022. The
deadline to file the objection reply will be 17 April 2022
that is the 1 month from the date of receipt of the report on email.
How to know if your trademark is objected or not ?
To learn how to check your trademark objection online and how to download
the examination report
Click Here
When you can expect a trademark objection ?
Once your application is filed , now a days trademark applications are
getting objected within 2-3 months. Hence, one must
check their application regularly. For checking your application status
you may visit the above link. What if my application is
filed by someone else and now I want to change the attorney, will that be
a problem? No, you may change attorney on record anytime,
you just need to issue new Power of attorney.
Amrita Tirkey
Rishabh Awasti
Arpit Gupta
Rahul Singh
