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 would rather settle this without going to court if the law allows it, but I need to know my rights before I sign anything. Please tell me what to do first and what document to keep.

MyVakeel Legal Desk · Accepted Answer

Under Indian law, Trade Marks Act, 1999, Section 9 is the starting point for this intellectual property question. What follows is the position in substance, together with the steps that usually make the difference in practice.

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.

In practice, in this order: 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.

Timing matters here: Trade Marks Act, 1999, Section 9 works on limitation periods, so a trademark objection reply claim that is right on the merits can still fail if it is brought late. 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 intellectual property.