How to Reply to a Trademark Examination Report: Common Objections and How to Overcome Them

After you file a trademark application, the Trade Marks Registry examines it and issues an examination report. Many applications receive objections, and that's normal. An objection isn't a refusal; it's the examiner's preliminary view, and a well-argued reply often gets the mark accepted. The worst thing you can do is ignore it, because an unanswered report can lead to the application being treated as abandoned. This guide explains the common objections and how to respond.

The Deadline

The reply is generally due within one month of receiving the examination report. Check the date on the report on the trademark portal as soon as it's issued, and file the reply on the portal before the deadline. If you miss it, the application can be treated as abandoned, and reviving it is harder than replying on time.

Absolute Grounds: Section 9

Section 9 of the Trade Marks Act, 1999 covers objections about the mark itself. The common ones are:

• Lack of distinctiveness: the mark can't tell your goods or services apart from others', such as a common word or simple shape.
• Descriptive marks: the mark describes the kind, quality, quantity, purpose, value or origin of the goods or services, such as "Fresh Bakery" for baked goods.
• Generic or customary terms: words that have become the ordinary name for the product in the trade.
• Deceptive marks: the mark could mislead the public about the nature or origin of the goods.
• Other grounds, such as marks likely to hurt religious sentiments, or marks prohibited under other laws.

How to respond

• Explain why the mark is distinctive, for example because it's an invented word, or an unusual combination of words.
• If the mark has been used for some time, show that it has acquired distinctiveness through use, with an affidavit of use and evidence such as sales figures, invoices, advertising and media coverage.
• Offer to disclaim descriptive parts of the mark, so the protection is for the mark as a whole.
• Narrow the list of goods or services if the objection only applies to some of them.

Relative Grounds: Section 11

Section 11 covers objections based on earlier marks. The examiner cites earlier applications or registrations that are identical or similar, for identical or similar goods or services, where there's a likelihood of confusion.

How to respond

• Show that the marks are different when compared as a whole, in look, sound and meaning.
• Show that the goods or services are different, sold through different channels, or to different customers.
• Point out that the cited mark isn't in use, has lapsed, or has been abandoned, and check its current status on the portal.
• Show honest concurrent use, if you've used your mark in good faith for a long time alongside the cited mark.
• Obtain a consent letter from the owner of the cited mark, where that's possible.
• Narrow the goods or services to avoid the overlap.

Writing the Reply

A good reply addresses each objection specifically, with reasons and evidence. It refers to the mark as a whole, explains the market context, and attaches an affidavit and supporting documents where you rely on use. Generic replies that don't deal with the specific objections are rarely successful.

The Hearing

If the examiner isn't satisfied by the written reply, a hearing is scheduled, usually held online. Attend, or have your agent or advocate attend, and present your arguments and evidence. After the hearing, the mark is either accepted and advertised in the Trade Marks Journal, or refused. A refusal can be challenged through review or appeal within the time allowed.

Common Mistakes

• Missing the reply deadline.
• Filing a generic reply that doesn't address the actual objections.
• Claiming long use without evidence to back it up.
• Not checking the status of cited marks, which may have lapsed.
• Missing the hearing date.

Getting Help

Think Filing drafts replies to trademark examination reports, prepares evidence of use, and represents applicants at hearings.

Sources

• Trade Marks Act, 1999, sections 9 and 11.
• Trade Marks Rules, 2017.
• Trade Marks Registry guidance on examination.