Handle Trademark Objections

How to Handle Trademark Objections?

A trademark objection occurs when the Trademark Registrar or a third party raises concerns about your application. Handling objections correctly is crucial to securing your trademark registration.

 

Types of Trademark Objections

  1. Objection by Registrar (under Section 9 or Section 11 of the Trade Marks Act, 1999)
    • Section 9: Lack of distinctiveness, descriptive nature, or general terms.
    • Section 11: Similarity with an existing trademark.
  2. Opposition by Third Party
    • Raised during the 4-month publication period in the Trademark Journal.
    • Usually from an entity with a similar mark claiming potential confusion or dilution of their brand.

 

Steps to Handle a Trademark Objection

Step 1: Review the Examination Report

  • The Registrar issues an examination report detailing the reasons for objection.
  • The report is available on the Trademark Registry website and sent to the applicant’s registered email.

Step 2: File a Response Within 30 Days

  • A Trademark Objection Reply (TM-O) must be submitted within 30 days from the date of objection.
  • The reply should include:
    • Justification for distinctiveness and uniqueness.
    • Legal precedents and supporting case laws (if applicable).
    • Proof of prior use (if applicable).
    • Necessary changes to avoid conflicts.

Step 3: Attend the Trademark Hearing (if required)

  • If the Registrar is unsatisfied with the reply, a hearing is scheduled.
  • Present oral arguments and evidence (e.g., sales invoices, advertising materials, brand reputation proof).

Step 4: Publication in Trademark Journal

  • If objections are cleared, the trademark is published in the Trademark Journal for public opposition.

Step 5: Handling Opposition (if any)

  • If a third party opposes the trademark, respond with a counterstatement within 2 months.
  • Evidence (documents, brand reputation proof) is submitted to support the claim.

Step 6: Registration or Appeal

  • If the opposition is resolved in your favor, the Registrar grants trademark registration.
  • If rejected, an appeal can be filed with the Intellectual Property Appellate Board (IPAB).

 

Documents Required to File a Trademark Objection Reply

  • Trademark Examination Report
  • Power of Attorney (if filing through an agent)
  • Business Registration Certificate
  • Affidavit of Usage (if applicable)
  • Brand promotion materials (advertisements, brochures, invoices)
  • Sales Proof (invoices, GST returns, website screenshots)

 

Common Reasons for Trademark Objections & How to Overcome Them

Objection Reason

How to Overcome It

Similarity to an existing trademark

Prove distinctiveness and difference in design, pronunciation, or industry.

Lack of distinctiveness

Provide evidence of brand recognition and prior use.

Generic or descriptive nature

Show secondary meaning through marketing and sales.

Incorrect classification of goods/services

File an amendment to correct classification.

Incomplete documentation

Submit the required documents promptly.

 

 

Why Choose Chhabria Associates?

At Chhabria Associates, we provide expert assistance for trademark objections, ensuring your brand is legally secured.

✅ Expert Legal Drafting for replies & appeals
✅ Trademark Hearing Representation
✅ Timely Filing to prevent rejection
✅ Affordable & Hassle-Free Process

📞 Call: 9289521162
📱 WhatsApp: 9289521162
📧 Email: chhabriaca@gmail.com
📍 Address: K-149, Main Road, Karawal Nagar, Delhi-110090

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