I received a trademark examination report raising objections, what should I do

Question

My trademark application received an examination report citing objections and I do not know how to reply within the deadline. I have been reading conflicting things online and I would like to understand what Indian law actually says about this, which Act and Section applies, what the realistic timelines and costs are, and what I should be doing right now to protect my position. If the matter can be resolved without litigation I would prefer that route, but I want to know what my rights are before I agree to anything or sign any document.

MyVakeel Legal Desk · Accepted Answer

I received a trademark examination report raising objections, what should I do is governed in India primarily by Trade Marks Act, 1999, Section 9, Trade Marks Act, 1999, Section 11 and Trade Marks Rules, 2017, Rule 38. The short answer is set out below, followed by the practical steps most people in this situation need to take. Read it alongside the specific provisions named, because the exact relief available to you turns on the facts you can prove on paper.

Section 9 of the Trade Marks Act, 1999 empowers the Registrar to refuse registration on absolute grounds such as lack of distinctiveness, descriptiveness, or the mark being customary in the trade, while Section 11 covers relative grounds, mainly similarity to an earlier registered or applied-for mark that could cause confusion.

Rule 38 of the Trade Marks Rules, 2017 requires the applicant to file a written response to the examination report within one month of its issuance, failing which the application is treated as abandoned under Rule 39.

A strong reply typically distinguishes the cited marks on visual, phonetic and structural grounds, submits evidence of prior or extensive use, honest concurrent use under Section 12, or consent from the cited proprietor, and cites comparable marks already coexisting on the Register.

If the Registrar is not satisfied with the written reply, a show-cause hearing is scheduled, and the applicant or their agent can appear to make oral submissions before the Registrar passes a reasoned order accepting, conditionally accepting or refusing the application.

What to do next: 1) Read the objection carefully to identify whether it is under Section 9 or Section 11; 2) Gather use evidence, invoices, advertising material and prior registrations; 3) File a point-by-point written response within one month of the report; 4) Attend the hearing in person or through an agent if one is scheduled.

If the other side has already issued a notice, filed a case or set a deadline, treat the matter as time-sensitive — most remedies under Trade Marks Act, 1999, Section 9 carry limitation periods, and a delay you cannot explain weakens an otherwise strong case. You can post the details on the MyVakeel forum for a practising advocate to review, or book a paid consultation with a Bar Council verified lawyer in this practice area.