What is a Trademark Objection Reply?
A trademark objection reply is a formal written response to the Trademark Registry.
It is submitted when an examiner raises an objection against your trademark application during its review.
This objection, issued under Section 9 or Section 11 of the Indian Trade Marks Act, 1999, may arise due to reasons such as a lack of distinctiveness or incorrect documentation.
The reply must address each point of objection with legal reasoning, relevant case laws, and evidence showing that the mark is distinctive and eligible for registration.
A timely and well-drafted reply can help overcome the objection and move the application toward registration.
Trademark Examination Report The Examination Report is the official document from the Trademark Registry that outlines the specific reasons for the trademark objection.
It will cite relevant sections of the Trade Marks Act, 1999, under which the objections are raised.
Understanding this report is the first crucial step in drafting a compelling response.
Here’s what you need to know about the Examination Report: Official Communication: This report is the formal way the Trademark Examiner communicates their findings after reviewing your application.
Detailed Objections: It lists every single reason why your trademark application cannot be accepted for registration in its current form.
Legal Basis: Each objection will clearly state the specific section(s) of the Trade Marks Act, 1999, that your application is deemed to violate (e.g., Section 9 for non-distinctiveness, Section 11 for similarity to existing marks).
Search Report Attached: Often, the Examination Report includes a "Search Report" as an annexure.
This document lists all existing trademarks that the examiner found similar or identical to your proposed mark, which are the basis for Section 11 objections.
Crucial for Reply: You must thoroughly read and understand every point in this report.
Your entire trademark objection reply will be structured around rebutting these specific objections.
Online Availability: Once issued, the Examination Report is uploaded to the IP India online portal , and you can access it using your trademark application number.
Trademark Objection Reply Time (30-Day Deadline) Once the Trademark Examiner issues an Examination Report and it's uploaded online, a critical clock starts ticking.
The Deadline: You have a period of 30 days from the date of the issuance of the Examination Report to file your reply.
Where to Check the Date: This crucial date is mentioned on the Examination Report itself, which you can download from the IP India online portal once your application status changes to "Objected." Importance of Prompt Action: It is highly advisable not to wait until the last minute.
Start preparing your response to the trademark objection as soon as you receive the report.
No Automatic Extensions: Unlike some other legal processes, there is no automatic extension for filing this response.
While theoretically, the Registry might accept replies slightly beyond 30 days if the status still shows "Awaiting Reply to Examination Report," relying on this is risky and not recommended.
Online Filing: The trademark objection reply online facility makes it convenient to file your response within the deadline, even from remote locations.
What Happens if You Don't File a Reply to a Trademark Objection?
Failing to submit your reply within the stipulated 30-day period has very serious consequences: Abandonment of Application: If you don’t respond to a trademark objection by the deadline, your application will be marked as "Abandoned." Loss of Progress and Fees: Once an application is abandoned, it means it is officially closed.
You will lose all the progress made on that application, and more importantly, the government fees you paid during the initial filing will be forfeited.
Restarting the Process: To protect your brand, you would then need to file a completely new trademark application from scratch, incurring fresh government fees and restarting the entire examination process.
This leads to significant delays and additional costs.
Loss of Priority: If you file a new application, you also lose the original filing date of your abandoned application.
This means if another similar trademark was filed after your first application but before your new one, their application might now have priority over yours.
Documents Required for Trademark Objection Reply in India To effectively prepare and file the reply to your trademark objection, you will typically need the following documents: Copy of the Examination Report: The original or clear copy of the Examination Report issued by the Trademark Registry.
Trademark Application Details: Your trademark application number, date of filing, and a clear representation of your trademark.
Proof of Prior Use (if applicable): Invoices, sales figures, and purchase orders from the date of first use.
Advertisement materials (print ads, digital ads, brochures).
Website screenshots, social media page links, and engagement data.
Any other promotional materials or evidence of market presence?
An affidavit of use, duly notarized, detailing the history and extent of your trademark's use.
Supporting Affidavits: If you need to establish facts, such as acquired distinctiveness or non-confusion, affidavits from relevant parties (e.g., customers, industry experts) are required.
Legal Arguments & Case Laws: References to relevant sections of the Trade Marks Act, 1999, and citations of relevant judgments from the Intellectual Property Appellate Board (IPAB) or High Courts that support your arguments.
Power of Attorney (Form TM-48): If you are filing the trademark objection reply through a trademark agent or attorney, a duly executed Power of Attorney in their favor.
Identity and Address Proof: For the applicant (e.g., PAN card , Aadhaar card, company registration certificate).
MSME/Startup Certificate: The MSME certificate is applicable to claim any benefits or demonstrate the nature of your business.
Any Amendments (Form TM-M): If you need to make any changes to the application (e.g., description of goods/services, applicant details), you'll need to prepare and file Form TM-M along with the reply and pay the applicable government fees.
How to Draft a Reply to a Trademark Objection Drafting a robust trademark objection reply requires a careful legal strategy and attention to detail.
Here’s how you approach it: 1.
Analyze the Examination Report Carefully review the objection raised by the Trademark Examiner to understand the grounds for refusal.
Understand Every Objection: Read the Examination Report meticulously.
Identify each specific objection raised by the examiner, noting the cited sections of the Trade Marks Act.
Identify Weaknesses: Understand why the examiner thinks your trademark is objectionable.
Is it descriptive?
Too similar to another mark?
Are there procedural errors?
2.
Formulate a Legal Strategy Develop a strong legal argument to counter the objection based on trademark law and precedents.
Address Each Point: Develop a specific legal argument and counter-statement for each objection.
Don't leave any stone unturned.
Cite Relevant Law: Reference the specific sections of the Trade Marks Act, 1999, and any relevant case laws that support your position.
Consider Amendments: If necessary, think about making minor amendments to your trademark or the description of goods/services to overcome the objection.
This often involves filing a separate form (TM-M) with applicable fees.
Gather Evidence: Start compiling any evidence that will strengthen your arguments, especially if you're claiming prior use or distinctiveness.
3.
Draft the Reply Prepare a well-structured response addressing each point raised in the Examination Report.
Structured and Clear: Write a well-structured and clear response that directly addresses each point from the Examination Report.
Professional Tone: Maintain a professional and respectful tone throughout the reply.
Strong Arguments: Present your arguments logically and persuasively.
Explain why your trademark should be registered despite the objections.
4.
Gather Supporting Evidence Collect relevant documents like usage proofs, invoices, and promotional materials to strengthen your case.
Proof of Use: If you are claiming prior use (e.g., under Section 9 or 11), collect evidence such as invoices, advertisements, website screenshots, social media presence, promotional materials, brochures, and sales figures.
Affidavits: Prepare affidavits from individuals who can testify to the use or distinctiveness of your trademark.
Distinction Evidence: If the objection is about distinctiveness, provide evidence showing how your mark has acquired distinctiveness through extensive use (e.g., sales data, advertising spend).
No Confusion Evidence: If the objection is based on similarity, demonstrate why your mark is sufficiently different from cited marks or why there's no likelihood of confusion.
5.
Finalize and File Review the reply for accuracy and submit it to the Trademark Registry within the prescribed deadline.
Review Thoroughly: Before filing, thoroughly review the entire response to your trademark objection and all supporting documents for accuracy and completeness.
A small error can lead to further delays.
File Online: Submit your trademark objection reply online through the official e-filing portal of the Trademark Registry.
Effective Trademark Objection Reply Format Header Your Name/Company Name: State the full legal name of the applicant as it appears on the trademark application.
Include the complete registered address to ensure proper communication.
Contact Details: Provide primary contact information, including your email address and phone number for easy communication.
This ensures the Registry can reach you if further clarification is needed.
Trademark Application Number: Mention your unique 8-digit trademark application number, which is essential for the Registry to identify your specific case.
Also, state the exact date of the Examination Report to establish the timeline for your reply.
To: Address the document formally to "The Registrar of Trademarks" and specify the relevant Trademark Registry office (e.g., Mumbai, Delhi) where your application was filed.
Subject Line Clearly and concisely state the purpose of the document in the subject line.
This helps the examiner quickly identify the nature of the correspondence.
Example: "Reply to Examination Report for Trademark Application No.
[Your Application Number] in respect of Mark '[Your Trademark Name]'" Introduction Start with a polite and formal opening, acknowledging the receipt of the Examination Report.
State that you have carefully reviewed the report and understand the objections raised.
Clearly express your intention to provide a comprehensive response to the trademark objection and respectfully request the acceptance of your trademark application for registration.
Point-wise Rebuttal This is the core of your reply; address each objection individually and systematically, quoting the specific objection and its relevant section from the Trade Marks Act, 1999.
Support your arguments by referring to any specific supporting documents (annexures) you are submitting as evidence.
Legal Arguments Beyond the specific rebuttals, dedicate a section to broader legal arguments that bolster your case for registrability.
This includes explicitly citing relevant sections of the Trade Marks Act, 1999, to demonstrate compliance.
Crucially, refer to and discuss pertinent Indian case laws (judgments from the Supreme Court, High Courts, or IPAB) that support your position on distinctiveness, non-descriptiveness, or likelihood of confusion, explaining their direct relevance to your mark.
Evidence of Use If you are claiming prior use of your trademark, this section is vital, especially for overcoming distinctiveness objections or distinguishing your mark from cited marks.
List and describe all supporting documents attached as annexures.
Demonstrate the extent and continuity of your trademark's use through evidence such as invoices, advertising materials, and an affidavit of use, indicating the date of first use and geographical reach.
Prayer Conclude your reply to the trademark objection with a clear, formal request to the Trademark Registrar.
Example: “Given the foregoing submissions, arguments, and supporting evidence, we humbly pray that the Learned Examiner may be pleased to withdraw the objections raised in the Examination Report.
Accept the aforementioned Trademark Application No.
[Your Application Number], and proceed to advertise the mark '[Your Trademark Name]' in the Trademark Journal for registration.” How to File a Trademark Objection Reply Online The process to file a trademark objection reply online is straightforward, using the official IP India e-filing portal: Step 1: Access the IP India E-filing Portal Open your web browser and go to the official e-filing portal for trademarks in India.
Step 2: Log In to Your Account Enter your registered 'User ID' and 'Password' in the respective fields.
Complete the captcha verification.
Click the 'Login' button.
If you are a new user, you will need to register on the portal first.
If you are using a trademark attorney, they will use their professional login credentials.
Step 3: Navigate to the 'Reply to Examination Report' Section After logging in, you will typically see a dashboard or a main menu.
Look for a section related to "Post Filing," "E-Responses," or "Reply to Office Action." The exact wording may vary, but it will be intuitively named for filing responses.
Click on the appropriate link, which is commonly labeled "Reply to Examination Report" or "E-response to Examination Report." Step 4: Enter Your Trademark Application Number The system will prompt you to enter your 8-digit Trademark Application Number.
This number uniquely identifies your application and links your reply to it.
Double-check the application number for accuracy to ensure your reply is filed against the correct application.
Step 5: Upload Your Main Trademark Objection Reply Document You will see an option to upload your primary response document.
Click on the 'Choose File' or 'Browse' button and select the PDF file containing your drafted response.
Ensure this PDF is clear, complete, and signed.
Step 6: Attach Supporting Documents (Annexures) Below the main document upload, there will usually be an option to "Add Annexure" or "Upload Supporting Documents." For each piece of evidence (e.g., affidavit of use, invoices, advertisements, website screenshots, copies of relevant court judgments), click this button.
Select each supporting document (which should also be in PDF format) one by one and upload them.
Best Practice: Label your PDF files clearly (e.g., "Annexure-1_User_Affidavit," "Annexure-2_Sales_Invoice_2024").
This helps the examiner easily cross-reference them with your arguments.
Step 7: Review and Verify All Submissions Before finalizing, the portal will usually provide a summary or a preview of your uploaded documents.
Carefully review everything: Confirm that all required sections of your reply are present.
Check that all necessary supporting documents have been attached.
Verify that the file names are correct and the documents are legible.
Ensure the trademark application number is correct.
Step 8: Submit the Reply Once you are fully satisfied that all details are accurate and all documents are properly uploaded, click the 'Submit' or 'File' button.
The system will process your submission.
Step 9: Download the Acknowledgment Receipt Upon successful submission, the portal will generate an electronic acknowledgment receipt.
This receipt typically includes a unique reference number or transaction ID for your filed response.
Download and save this acknowledgment receipt immediately.
It serves as irrefutable proof that you have filed your reply online within the deadline.
Trademark Objection Reply Charges The costs associated with a trademark objection reply primarily consist of government fees and professional fees (if you hire an expert).
Government Fees One of the most important aspects to note is that, generally, there is no direct government fee specifically for filing the trademark objection reply document itself.
No Direct Filing Fee for the Reply: The act of submitting your written response to the trademark objection to the Trademark Registry does not incur a separate government fee.
Fees for Amendments (if applicable): While the reply document itself is free, you might need to make amendments to your original trademark application as part of your response.
This is common, for instance, if the examiner objects due to an overly broad description of goods/services or minor errors.
If you need to amend your application (e.g., changing the description of goods/services, correcting applicant details, or modifying the mark slightly), you will need to file Form TM-M for the amendment.
Government Fee for filing Form TM-M (for amendment): Rs.
900/- per application when filed online (as per the First Schedule to The Trade Marks Rules, 2017).
Fees for Extension of Time (rare): While the trademark objection reply time is 30 days, in rare circumstances, if you need an extension to file your reply, there might be a fee for that.
However, this is generally not granted easily and is best avoided by filing on time.
Government Fee for Extension of Time (Form TM-M for specific requests): Rs.
900/- for online requests (as per the First Schedule to The Trade Marks Rules, 2017).
These fees are paid to trademark attorneys, legal consultants, or online service providers who assist you in drafting and filing your response.
Expertise is Key: Drafting a strong reply requires legal expertise, careful review of the report, and well-supported arguments under trademark law.
This expertise is what you pay for.
Factors Influencing Professional Fees: Complexity of the Objection: Simple procedural objections (like missing a Power of Attorney) are generally less expensive to resolve than complex legal objections based on distinctiveness or similarity to existing marks.
Number of Objections: If there are multiple objections, the work involved increases, which can reflect in the fees.
Research Required: Objections under Section 11 (similarity to existing marks) might require extensive research into cited marks and legal precedents, increasing the professional fee.
Experience of the Professional: Highly experienced or specialized trademark attorneys may charge more, but their expertise can significantly increase your chances of success.
Inclusion of Hearing: Some professional fees might include representation at a potential "Show Cause Hearing" if the examiner is not satisfied with the written reply.
This should be clarified upfront.
Typical Range: Professional fees for a trademark objection reply in India generally range from Rs.
2,000 to Rs.
15,000 or more, depending on the factors mentioned above.
Some service providers offer tiered pricing based on the complexity of the objection (e.g., a lower fee for Section 9 objections and a higher fee for Section 11 objections).
What Happens After Filing the Trademark Objection Reply?
After you successfully file a reply to your trademark objection online, the process continues as follows: Examination Review: The Trademark Officer reviews your reply to assess if the objections are satisfactorily addressed.
Acceptance or Hearing Notice: If satisfied, the mark moves to journal publication; if not, a hearing is scheduled for further clarification.
Trademark Hearing: You or your attorney presents your case in person or online before the registrar to defend the application.
Post-Hearing Decision: Based on the hearing, the officer may accept, reject, or request modifications to the trademark.
Journal Publication & Opposition: If accepted, the trademark is published in the Trademark Journal for 4 months, allowing public opposition.
Trademark Objection Reply Filing Acknowledgement Once your reply to a trademark objection is submitted, the Trademark Registry issues an Acknowledgement Receipt confirming the filing.
This document acts as proof that your response has been officially accepted for examination.
Here’s what it includes: Trademark Application Number: The unique eight-digit identifier for your trademark application.
Name of Applicant or Authorized Representative: The name of the individual or entity who applied, or their appointed trademark agent/attorney.
Filing Date and Time of Reply: The exact date and time your trademark objection reply was electronically submitted to the Registry.
This is critical for proving compliance with the 30-day deadline.
Trademark Class and Description: The specific class(es) of goods and services for which the trademark is sought, along with a brief description of the mark itself (e.g., word mark, logo).
Confirmation of Submission: Often, it will implicitly or explicitly confirm that a reply has been submitted, sometimes referencing the type of form or the context (e.g., "Reply to Examination Report").
Status Update Context: While the acknowledgement itself confirms submission, the overall status of your application in the trademark journal might still show "Objected" or "Under Examination" immediately after filing.
The acknowledgement is proof of your action, not an immediate change in the examination outcome.
How to Download the Trademark Objection Reply Acknowledgement?
The acknowledgment receipt for your trademark objection reply is usually part of the application's document history on the official IP India portal.
Visit the Official IP India Website: Go to ipindia.gov.in.
This is the main portal for intellectual property in India.
Navigate to "Trademark" and Select "Public Search" or "Status": From the main menu or quick links, find the "Trademarks" section.
You'll typically proceed through "Public Search" or directly to the "Trademark Status" page.
Enter Your Trademark Application Number: On the relevant search page, enter your unique 8-digit Trademark Application Number in the designated field.
Click “View Documents” or Access Document History: After viewing your trademark's current status, look for a link or tab that says "View Documents," "Document History," or a similar option.
This section lists all documents filed for and issued against your application.
Locate the Objection Reply PDF: Within the document history, find the entry corresponding to your trademark objection reply.
It might be labeled as "Reply to Examination Report," "E-response to Examination Report," or "MIS-R" (indicating Miscellaneous Response).
The associated PDF file will be your acknowledgment receipt.
Download and Save: Click on the link to open the PDF.
Download and securely save this acknowledgement receipt to your computer or cloud storage for your records.
It's an important document for future reference or if any queries arise.
How to Track the Status of Your Trademark Objection Reply?
After filing your trademark objection reply, the Registry will review it.
The status of your application will update on the IP India portal.
It's crucial to track this status to know the examiner's decision regularly.
Go to the e-Register Portal: Access the official e-Register portal.
This platform provides detailed status updates.
Enter Your Application Number: Under the "Trademark Application/Registered Mark" section, input your 8-digit Trademark Application Number.
View Current Status: Click "View" to see the latest status of your application.
"Objected": This status usually remains immediately after filing the reply, indicating that an objection was raised and a reply is expected.
Below this, you might see "Awaiting Reply to Examination Report" before you file, or if your reply hasn't been processed by the examiner yet.
"Reply to Examination-MIS": This specific entry often appears in the document history after your reply has been successfully uploaded and processed, confirming its receipt.
"Ready for Show Cause Hearing": If the examiner is not fully satisfied with your written response, they might schedule a hearing.
This status indicates that you need to prepare for a verbal argument.
"Accepted & Advertised": This is a positive outcome!
It means your reply has been accepted, and your trademark has been approved for publication in the Trademark Journal, opening it up for opposition by third parties for four months.
"Refused": If the examiner finds your reply unsatisfactory and no further recourse (like a hearing or appeal) is deemed appropriate at that stage, your application might be refused.
"Abandoned": If you failed to file the reply within the stipulated deadline (30 days) or did not attend a scheduled hearing, your application may be marked as abandoned.
This means the process has ended, and you lose all fees paid.
Connect with Easyfilings and let our experts handle the legal hassle while you grow your business.
Contact Us
