Receiving an examination report with objections does not mean your trademark application has been rejected. It means the Examining Officer has raised queries that must be addressed before your application can be accepted. A significant proportion of trademark applications receive some form of objection — it is a routine part of the process.

Key Deadline

You have 30 days from the date of the examination report to file your reply. This can be extended by a further 30 days by paying an additional fee. If no reply is filed within the time limit, your application will be treated as abandoned. There are limited remedies after abandonment.

Types of Trademark Objections in India

Absolute Grounds (Section 9 of Trade Marks Act)

These objections relate to the nature of the mark itself:

  • Descriptive marks: The mark describes the goods/services directly (e.g., "SWEET" for candy, "FAST DELIVERY" for courier services)
  • Generic marks: The mark is the common name for the goods (e.g., "COMPUTER" for computers)
  • Devoid of distinctive character: The mark lacks the ability to distinguish your goods from others
  • Deceptive: The mark is likely to mislead consumers about nature, quality, or origin
  • Geographical name: The mark consists exclusively of a geographical indication (e.g., "DELHI" for products from Delhi)
  • Surnames only: Marks that are exclusively a common surname

Relative Grounds (Section 11 of Trade Marks Act)

These objections arise because of conflict with an existing mark:

  • Identity with existing registered mark: Your mark is identical to an already registered mark in the same class
  • Similarity causing confusion: Your mark is similar to an existing mark and the goods/services are identical or similar, creating likelihood of confusion
  • Well-known marks: Your mark conflicts with a well-known trademark (which receives protection across all classes)

How to Respond to a Trademark Examination Report

For Descriptiveness Objections

Argue that the mark has acquired secondary meaning — that consumers associate the mark with your business specifically (not the general meaning). Support this with: length of use, sales figures, advertising spend, customer testimonials, and news coverage.

Alternatively, argue the mark is not actually descriptive — that it is suggestive or fanciful, which requires imagination to connect to the goods.

For Relative Grounds (Similarity) Objections

Argue that the marks are not confusingly similar by addressing:

  • Visual comparison: How the marks look different
  • Phonetic comparison: How the marks sound different
  • Conceptual comparison: How the marks have different meanings
  • Trade channel difference: If the goods/services are sold through different channels or to different consumers

You can also submit a consent letter from the existing proprietor (if you can obtain one) — this often resolves relative-grounds objections.

For All Objections

Your reply should be:

  • Filed in time (within 30 days, or 60 days with extension fee)
  • Specific — address each objection point by point
  • Supported by evidence (affidavit, invoices, marketing materials if claiming acquired distinctiveness)
  • Filed with Form TM-M if requesting a hearing

What Happens After You File Your Reply

The Examining Officer reviews your reply. Three outcomes are possible:

  1. Application accepted: The reply was satisfactory. The application moves to acceptance and publication.
  2. Hearing called: The examiner is not fully satisfied and requests a hearing. You (or your attorney) appear before the Registrar and make oral arguments.
  3. Application refused: The objections were not overcome. You can appeal to the Intellectual Property Appellate Board (IPAB) or the High Court.
Important

Do not ignore examination reports. Missing the 30-day deadline (or the 60-day extended deadline) results in automatic abandonment of your application. Once abandoned, there is no automatic right to restoration — you may need to re-file a fresh application, losing your original priority date.

How to Avoid Trademark Objections

  • Search before filing: A proper TM public search identifies potential conflicts before you invest in filing fees
  • Choose a distinctive mark: Invented words (like KODAK, XEROX) are easiest to register. Descriptive names are hardest
  • File in the right class: Filing in the correct class reduces relative-grounds objections from marks in different fields
  • Use an attorney: An experienced trademark attorney drafts the application to minimise objection risk and responds effectively if an objection is raised