Trademark Objection Reply under Section 9: Process & Documents

Introduction

A Trademark Objection Reply becomes necessary when the Trade Marks Registry raises objections during examination of a trademark application. An objection under Section 9 of the Trade Marks Act, 1999 generally relates to the inherent registrability or distinctiveness of the proposed mark. The applicant gets an opportunity to explain why the mark should be accepted and may submit supporting evidence with the reply.

What Is a Section 9 Trademark Objection?

Section 9 of the Trade Marks Act, 1999 contains the absolute grounds for refusal of registration. It covers several grounds relating to what cannot be registered as a trademark, including lack of distinctiveness, descriptiveness and certain prohibited marks.

A Section 9 Trademark Objection may arise where the mark:

• Has no distinctive character and cannot distinguish one person’s goods or services from another’s.
• Consists exclusively of words or indications describing the kind, quality, quantity, purpose, value, geographical origin or other characteristics of the goods or services.
• Consists exclusively of expressions that have become customary in common language or established trade practices.
• Is likely to deceive the public or cause confusion.
• Contains material that may hurt the religious susceptibilities of a section of Indian citizens.
• Contains scandalous or obscene matter.
• Contains matter prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
• Consists exclusively of a shape resulting from the nature of the goods, a shape necessary to obtain a technical result, or a shape that gives substantial value to the goods.

However, Section 9(1) also provides an important exception. A trademark should not be refused on the grounds mentioned in Section 9(1) if, before the application date, it acquired distinctive character through use or qualified as a well-known trademark.

Section 9 vs Section 11 Trademark Objection

These two objections should not be confused.

• A Section 9 objection relates to the inherent characteristics of the applied trademark.
• A Section 11 objection deals with relative grounds for refusal, including conflicts with earlier trademarks, likelihood of confusion, well-known trademarks and certain earlier rights protected through passing off or copyright.

How to File a Trademark Objection Reply under Section 9?

Analyse the Examination Report

Read the examination report carefully and identify the exact clause of Section 9 cited by the Examiner.

For example, the objection may relate to:

• Section 9(1)(a): lack of distinctiveness
• Section 9(1)(b): descriptive character
• Section 9(1)(c): customary expressions
• Section 9(2): deceptive, prohibited, religiously sensitive, scandalous or obscene matter
• Section 9(3): Consists exclusively of a shape resulting from the nature of the goods, a shape necessary to obtain a technical result, or a shape that gives substantial value to the goods.

The Trademark Objection Reply should address the specific objection rather than relying on a standard explanation.

Prepare a Point-by-Point Reply

The reply should explain why the trademark is capable of registration.

Depending on the objection, the applicant may argue that:

• The mark is inherently distinctive.
• The mark is suggestive rather than directly descriptive.
• The trademark must be considered as a whole.
• The words or device used are not customary in the relevant trade.
• The mark has acquired distinctiveness through continuous commercial use before the application date.
• The objection does not apply to the particular goods or services covered by the application.

The applicant may also rely on relevant statutory provisions and verified judicial precedents where appropriate.

Attach Supporting Evidence

Evidence becomes particularly important when the applicant relies on prior use or acquired distinctiveness.

Depending on the facts of the application, supporting documents may include:

• Earlier invoices showing use of the trademark
• Product packaging or labels
• Brochures and catalogues
• Advertising and promotional material
• Website screenshots
• Social media or digital marketing material
• Business correspondence
• Sales or turnover information relating to the mark
• Evidence showing the duration and geographical extent of use
• Affidavit supporting the claimed use, where appropriate

The documents should support the actual claims made in the Trademark Objection Reply.

File the Reply Within the Prescribed Time

Rule 33(4) provides that the applicant should respond within one month from the date of receipt of the examination report. If the applicant fails to respond within this period, the Registrar may treat the application as abandoned. Applicants who miss the prescribed period can also read about the position relating to a trademark objection after missing the deadline.

Can the Time for Filing the Reply Be Extended?

An applicant may seek an extension through Form TM-M under Section 131 read with Rule 109 of the Trade Marks Rules, 2017.

The Registrar may, if satisfied with the circumstances, grant an extension not exceeding one month. The extension is discretionary and should not be treated as automatic.

The current government fee for a general TM-M extension request is:

Documents Required for Trademark Objection Reply

The exact documents depend on the objection and facts of the application. Common documents include:

• Copy/details of the examination report
• Detailed reply addressing the Section 9 objection
• Evidence of prior commercial use, where relied upon
• Invoices, advertisements, brochures and website evidence
• Supporting affidavit, where appropriate
• Authorisation of agent, where the applicant is represented through an authorised agent

Under Rule 19, authorisation of an agent is executed through Form TM-M under the current Trade Marks Rules, 2017.

Trademark Objection Reply Format

A Trademark Objection Reply Format may generally contain the following:

To:

The Registrar of Trade Marks

Trade Marks Registry

Subject: Reply to Examination Report for Trademark Application No. [Application Number]

Trademark: [Mark Name]

Class: [Class Number]

Applicant: [Applicant Name]

Examination Report Date: [Date]

• Background: Briefly identify the trademark application and goods or services covered.
• Objection Raised: Mention the exact Section 9 clause cited in the examination report.
• Applicant’s Submission: Provide a point-by-point legal and factual response explaining why the objection should not prevent registration.
• Evidence Relied Upon: List the invoices, advertisements, brochures, sales records, affidavits or other supporting documents, where applicable.
• Prayer: Request the Registrar to consider the submissions, accept the trademark application and allow it to proceed to advertisement in accordance with the Trade Marks Act, 1999 and applicable Rules.

The actual reply should be customised to the trademark and the objection mentioned in the examination report. A generic template should not be used without checking the facts of the application.

What Happens After Filing the Trademark Objection Reply?

If the Registrar finds the response satisfactory, the application may proceed towards acceptance and advertisement in the Trade Marks Journal.

If the Trademark Objection Reply is not satisfactory, Rule 33(6) provides for an opportunity of hearing. Applicants can understand the next stage through the trademark hearing process. The Registry conducts the hearing in accordance with Rule 115 of the Trade Marks Rules, 2017.

A pending objection therefore does not by itself mean that the trademark application has been finally refused.

Professional Support for Trademark Objection Reply

Ebizfiling can assist applicants with:

• Reviewing the trademark examination report
• Identifying the Section 9 objection raised by the Registry
• Preparing a structured Trademark Objection Reply
• Organising supporting evidence of trademark use
• Assisting with applicable filing requirements
• Providing support for subsequent trademark hearing requirements, where applicable

Need help responding to a Section 9 objection? Ebizfiling can assist with reviewing the examination report, preparing a customised Trademark Objection Reply, organising supporting evidence and handling applicable filing requirements.

Conclusion

A Trademark Objection Reply under Section 9 should directly address the absolute grounds raised by the Trade Marks Registry. Applicants should carefully review the examination report, prepare appropriate legal submissions and provide supporting evidence where required. Filing the reply within the prescribed period can help the application continue to the next stage of the trademark registration process.

Frequently Asked Questions