Trademark Objection

When a trademark application is examined by the Trade Marks Registry, the Examiner may raise objections under Section 9 or Section 11 of the Trade Marks Act, 1999 before accepting the mark for advertisement. Section 9 sets out the absolute grounds for refusal — marks that are devoid of distinctive character, that are purely descriptive of the goods or services, or that are likely to deceive or cause confusion as to the nature, quality, or geographical origin of the goods. Section 11 sets out the relative grounds for refusal — where the applied-for mark is identical or deceptively similar to an earlier registered or pending mark for identical or similar goods/services, creating a likelihood of confusion. Section 11(6) further protects well-known trademarks against use on unrelated goods and services where such use would take unfair advantage of, or be detrimental to, the earlier mark's reputation.

An Examination Report raising such objections must be responded to within the statutory period, failing which the application is treated as abandoned. Our response strategy typically involves distinguishing the applied-for mark on facts and prior use, submitting evidence of acquired distinctiveness or honest concurrent use, and, where necessary, requesting a hearing before the Registrar under the Trade Marks Rules, 2017. A well-prepared response at this stage is critical, since an unresolved objection prevents the mark from proceeding to advertisement in the Trade Marks Journal and eventual registration under Section 18.

Trademark objection services cover the response to the examination reports and the objections raised by the Trademarks Registry under the Trade Marks Act 1999 — the examination of the application under Section 18, the objections on the distinctiveness, the similarity with the prior marks, the descriptiveness and the other grounds under the Act, and the preparation and the filing of the response with the evidence and the arguments. The objection is the Registry's preliminary position on the mark, and the response is the applicant's case for why the mark should proceed.

The trademark application meets the Registry's examination before it proceeds — the report that raises the objections under the Trade Marks Act, and the response that answers them with the arguments and the evidence — the distinctiveness of the mark, the absence of the conflict with the prior registrations, the acquired distinctiveness where the mark has been used, and the other grounds. The response is filed within the prescribed period, and the matter proceeds to the hearing where the objection survives the response.

The cost of an un-answered objection is the abandoned application: the mark that was never examined on the applicant's case, the application that lapsed for the want of the response, and the brand protection that was lost with it.

This service is for applicants facing trademark objections. We review the examination report and the grounds, prepare the response with the evidence and the arguments under the Trade Marks Act 1999, file within the prescribed period, attend the hearing where required, and pursue the mark's registration so the objection is answered with the applicant's full case.