Reply to a Trademark Examination Report

At times the trademark examiner might raise an objection to a trademark due to myriad reasons. This article provides useful insight as to how to respond to a trademark examination report in case an objection is raised by the trademark examiner.

Section 9 and 11 of The Trade Marks Act, 1999 specifies the absolute and relative grounds for refusal of Trademark registration. In addition, the examiner will check if the application is filed in the correct form, and decide whether to impose any restrictions or conditions on the trademark.

It is in the interest of the applicant to file his application meeting all requirements for registration.

However, we all are just human beings thus we all make mistakes.

Some mistakes may appear in the necessity to reply to a trademark examination report. The examiner will file such report if he has any of above-mentioned grounds for objections.

If so, the examiner compiles objections into the examination report, which is uploaded on the website of the Trade Marks Registry. The trademark applicant or his representative (attorney) has to file a response to the objections raised in the examination report.

Normally the examination report needs to be responded within a period of 30 days from the date of the examination report. However, a deadline for responding to the report of will be mentioned at the end of the report.

Here are some useful tips

1. If grounds for examination report were “the existence of similar or identical trademarks” applicant can explain that those trademarks mentioned by the examiner are different from the applicant’s.
   In addition, it is in your right to ask the owner of the conflicting trade mark to give you a consent letter.
   Do not forget that similarity means not only similar marks but also a similar or identical list of goods and/or services of these marks. So the easiest way to avoid registration refusal is to remove conflicting goods or services from your application.
2. If grounds for examination report were “the wrong classification of trademark class” applicant can file a request to correct the class. He also can object to the examiner's position if he feels that report is wrong.
3. If grounds for examination report were “lack of distinctiveness”, the applicant can file a response with evidence of distinctiveness acquisition. Such evidence may be the duration of use, extensive use etc. In this case, the applicant will have to file an affidavit along with supporting documents that will prove use of a mark.