Receiving a trademark objection can be overwhelming, but it is a common part of the trademark registration process. A trademark objection does not mean your application is rejected. It simply indicates that the examiner has raised concerns that need to be addressed before your application can proceed further. At My Legal Pal, our experienced legal team helps businesses and individuals respond to trademark objections effectively, increasing the chances of successful registration.
What is a Trademark Objection?
A trademark objection is an official response issued by the Trademark Registrar when there are concerns regarding your trademark application. The objection is typically raised under Section 9 or Section 11 of the Trademark Act, 1999, based on issues like lack of distinctiveness, similarity to existing marks, or misleading elements.
An applicant must submit a trademark objection reply within 30 days from the date of receiving the Examination Report. Failure to respond on time may result in abandonment of the trademark application.
Documents Required for Filing a Trademark Objection Response
To effectively respond to a trademark objection, you must submit a well-drafted reply along with supporting documents. The required documents may vary based on the reason for the objection, but the following are generally needed:
1. Trademark Examination Report
A copy of the Examination Report issued by the Trademark Registrar mentioning the objection under Section 9 or Section 11 of the Trademark Act, 1999.
2. Power of Attorney (PoA)
A Power of Attorney (Form TM-48) is required, signed by the applicant.
3. Affidavit of Trademark Usage (If applicable)
If the trademark has been in prior use before the application date, an affidavit of use is required. This affidavit should mention the date of first use and must be notarized.
4. Proof of Trademark Usage (For overcoming Section 9 objections)
- Invoices & Bills – Sales invoices showing commercial use of the trademark.
- Advertising Materials – Brochures, social media ads, flyers, posters, and promotional materials.
- Website and Domain Proof – Screenshots of the official website where the trademark is used.
- Social Media & Online Presence – Posts, campaigns, and business profiles showcasing the trademark.
- Packaging & Labels – Product packaging with the trademark clearly visible.
5. Additional Supporting Documents (If Needed)
Any other document that strengthens the case, such as copyright registration, MSME certificate (for startups), or business registration documents etc.
Common Reasons for Trademark Objection
✔ Lack of Distinctiveness – If the applied trademark is too generic, descriptive, or lacks uniqueness, it may be objected to under Section 9 of the Trademark Act.
✔ Similarity with an Existing Trademark – If the applied mark is similar or identical to an already registered trademark, an objection may be raised under Section 11 due to the likelihood of confusion among consumers.
✔ Use of Restricted Words or Symbols – Trademarks that include prohibited terms, offensive words, or misleading geographical indications may face objections.
✔ Incorrect Trademark Classification – If the application is filed under the wrong class of goods or services, an objection can be raised.
✔ Failure to Provide Required Documents – If supporting documents such as a user affidavit or proof of prior usage are missing, the application may be objected to.
Understanding the key differences between these sections can help in drafting a strong response.
| Basis | Section 9 – Absolute Grounds for Refusal | Section 11 – Relative Grounds for Refusal |
|---|---|---|
| Nature of Objection | Based on the inherent nature of the trademark | Based on conflict with existing trademarks |
| Main Concern | The trademark lacks distinctiveness or is descriptive, generic, or misleading | The trademark is similar or identical to an already registered or pending trademark |
| Key Focus | Whether the applied mark can function as a trademark | Whether the applied mark will cause confusion among consumers |
| Examples of Objections | – Common or generic words (e.g., “Fresh Water” for a bottled water brand) – Descriptive terms (e.g., “Sweet Bakery” for a bakery) – Deceptive marks (e.g., “Organic Cure” for a chemical-based product) – Use of prohibited symbols or words (e.g., the national emblem) |
– The applied mark sounds or looks similar to an existing registered trademark – The applied mark is for similar goods/services, leading to a likelihood of confusion (e.g., “McDello” for fast food, resembling “McDonald’s”) – The mark is similar to a well-known trademark and may dilute its distinctiveness |
| Legal Standard Applied | Absolute refusal – The mark is rejected outright if it does not meet trademark eligibility criteria | Relative refusal – The mark may be rejected based on comparison with existing trademarks |
| Possible Ways to Overcome Objection | – Proving acquired distinctiveness through continuous and extensive use – Submitting evidence like sales records, advertisements, and invoices – Filing an affidavit stating long-term use |
– Arguing that the applied trademark is phonetically, visually, or conceptually different – Demonstrating that the existing trademark and the applied mark cater to different target audiences or industries – Seeking co-existence agreements with the owner of the earlier trademark |
| Impact if Not Addressed | If not replied to, the trademark application will be rejected and abandoned | If not replied to, the trademark may be rejected for being too similar to an existing mark |
| Best Approach to Respond | – Emphasize the uniqueness of the mark – Provide legal precedents supporting distinctiveness |
– Highlight differences in spelling, pronunciation, meaning, or trade channels – Show no likelihood of confusion or misleading association |
Difference Between Trademark Objection and Trademark Opposition
Many applicants confuse trademark objection and trademark opposition, but they are distinct stages in the trademark registration process. Below is a comprehensive comparison to understand their key differences:
| Basis | Trademark Objection | Trademark Opposition |
|---|---|---|
| Definition | An official concern raised by the Trademark Registrar during the examination of a trademark application. | A challenge filed by a third party after a trademark is published in the journal, opposing its registration. |
| Who Raises It? | The Trademark Examiner during the examination stage. | Any third party (individual, business, or competitor) who believes the trademark should not be registered. |
| When Does It Occur? | Before the trademark is published in the Trademark Journal. | After the trademark is published in the Trademark Journal but before final registration. |
| Grounds for Raising | – Lack of distinctiveness (Section 9) – Similarity with an existing mark (Section 11) – Use of restricted or misleading terms |
– Similarity or conflict with an existing registered or pending trademark – The mark is generic, descriptive, or deceptive – The mark creates unfair competition or misleads consumers – The opponent claims prior usage rights |
| Purpose | To ensure that only eligible trademarks proceed to the next stage. | To allow interested third parties to object before a conflicting mark gets registered. |
| Legal Basis | Trademark Act, Section 9 & 11 (Absolute & Relative Grounds for Refusal). | Trademark Act, Section 21 (Opposition to Registration). |
| Response Time | The applicant must file a trademark objection reply within 30 days of receiving the examination report. | The applicant must file a counterstatement within 2 months of receiving the opposition notice. |
| What Happens If No Response Is Filed? | The trademark application is abandoned and cannot proceed further. | The opponent wins by default, and the trademark registration is refused. |
| Who Handles the Case? | The Trademark Registrar reviews the reply and decides whether to accept or schedule a hearing. | The Trademark Registrar conducts proceedings and hearings to decide the matter. |
| Resolution Process | If the examiner is satisfied with the reply, the trademark moves to publication in the Trademark Journal. If not, a hearing is scheduled. | If the opposition is not settled amicably, it leads to legal hearings, and the registrar makes a decision based on the evidence provided. |
| Final Outcome | If objections are cleared, the application proceeds to publication in the Trademark Journal. | If opposition is successful, the application is rejected. If opposition is unsuccessful, the trademark proceeds to registration. |
How to Respond to a Trademark Objection?
1. Review the Examination Report
Thoroughly examine the reasons cited in the Trademark Examination Report to understand the concerns raised by the Registrar.
2. Draft a Strong Reply
A well-drafted trademark objection reply must address each issue raised by the examiner. This includes legal arguments, case laws, and justifications supporting the uniqueness and registrability of the trademark.
3. Provide Supporting Documents
If required, submit proof of usage, brand advertisements, sales invoices, or user affidavits to demonstrate that the trademark has acquired distinctiveness.
4. Legal Representation (If Necessary)
In cases where the Registrar is not satisfied with the reply, an in-person hearing may be scheduled. Our legal experts can represent you during the hearing to strengthen your case.
5. Follow Up with the Trademark Registry
Once the response is submitted, regular follow-ups are required to track the status of the application and ensure further action is taken promptly.
Why Choose My Legal Pal for Responding to Trademark Objections?
✅ Expert Legal Drafting: Our experienced attorneys prepare a strong and well-reasoned reply to maximize approval chances.
✅ Compliance with Trademark Laws – We ensure that your response aligns with the latest trademark laws and guidelines.
✅ Quick and Hassle-Free Process – Our streamlined process ensures that your response is submitted within the stipulated timeline, avoiding application rejection.
✅ End-to-End Support – From analyzing the objection to preparing legal arguments and representing you in hearings, we handle the entire process.
Get Expert Help for Your Trademark Objection Today
A trademark objection does not mean rejection. With a well-prepared response, your application can proceed successfully. Let expert IP Attorneys of My Legal Pal handle your trademark objection professionally and ensure the best chance of approval. Contact us today to get started!
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