Learn the trademark examination process in India, common objections, and how to draft an effective reply for smooth registration.

What is Examination Report

Once a trademark application is filed in India, it does not directly proceed to registration. Instead, the application is subjected to substantive examination by the Trade Marks Registry under the Trade Marks Act, 1999 and Trade Marks Rules, 2017 (as amended up to 2024).

The objective is to ensure that the mark complies with the law, does not mislead the public, and is capable of serving as a valid indicator of commercial origin.

If the Examiner finds issues, an Examination Report is issued citing objections under Sections 9 or 11 or clerical error/other non-compliance. It also contains the date of issue and the name of the examiner. In case of section 11 objection, it cites similar marks too, with their details.

Timeline and Procedure of Examination

1. Filing of Application (Form TM-A): Once filed, the application receives an application number and is queued for examination.

2. Examination by Registry: Applications are usually examined within 8 to 10 months from the date of filing. 

3. Examination Report: If objections are raised under Sections 9 or 11 or clerical error/other non-compliance, the report is uploaded on the IP India portal & mailed to the attorney/applicant.

4. Reply Deadline: Applicant must reply within 30 days of issuance of the Examination Report (Rule 33).

   • Failure to reply = application abandoned (Section 132 and Rule 33).

   • Reply may be followed by a hearing if the Examiner is not satisfied.

Absolute Grounds for Refusal

The Registrar examines whether the trademark is barred under Section 9 (absolute grounds for refusal). Each clause is important and applied distinctly.

Lack of Distinctiveness

• Ground: Marks incapable of distinguishing the goods/services of one person from another (Section 9(1)(a).

• Example: “TECH” for IT services, “FOOD” for a restaurant chain, 

  Trademark Application Shri Ram Mandir-

        Download-Examination Report

• Reply Strategy: Show inherent distinctiveness or prove acquired distinctiveness (secondary meaning) through continuous use, advertising, consumer recognition, sales turnover, affidavits of users, etc.

Descriptive Marks

• Ground: Marks consisting exclusively of terms describing the kind, quality, intended purpose, values, geographical origin, or other characteristics (Section 9(1)(b)..

• Example: “Fresh & Tasty” for food, “SPEEDY DELIVERY” for courier services.

      Trademark Application Fresh & Tasty

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• Reply Strategy: Argue that the mark is suggestive rather than descriptive, or provide evidence of secondary meaning showing that consumers identify the mark with your business.

Customary in Current Language or Trade

• Ground: Marks consisting exclusively of terms/indications that have become customary in the current language or in bona fide established trade practices (Section 9(1)(c)..

• Example: “ESCALATOR” (generic), “EMAIL” for electronic mail services.

      Trademark Application of "18+" trademark

       Download-Examination Report    

• Reply Strategy: Show that the term is not exclusively generic/customary, highlight distinctive stylization (logos, devices, combinations), and rely on consumer perception surveys or market evidence to show distinctiveness.

Prohibited Marks-Section 9(2)(a to d)

Deceptive or Confusing Marks

A mark that is likely to deceive or cause confusion cannot be registered (Section 9(2)(a)).

Example: “SWISS CHOCOLATE” for chocolates made in India. To overcome, one may narrow the specification, disclaim misleading parts, or show that the mark as a whole is not deceptive.

Hurt Religious Sentiments

Marks that may hurt the religious susceptibilities of any class or section of Indian citizens are barred (Section 9(2)(b)).

For example, using sacred religious symbols in a commercial trademark. Replies must argue that the mark is used respectfully, in a non-offensive manner, or provide alternate branding elements to distinguish.

Example:

Trademark Application of "Om Durga" Trademark for Tobacco in class 34

Examination Report of "Om Durga" Trademark

Scandalous or Obscene Matter

Marks containing scandalous or obscene matter cannot be registered (Section 9(2)(c)).

For instance, vulgar words or offensive graphics. Replies generally argue that the mark is not offensive to the average person and may rely on dictionary meanings or prior accepted registrations.

Example:

Trademark Application of "Bastards" Trademark

Examination Report of "Bastards" Trademark

Marks Prohibited under Emblems and Names Act, 1950

Any trademark containing names or emblems prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 cannot be registered (Section 9(2)(d)).

Example: the Indian National Flag, or “Mahatma Gandhi.” No reply can overcome this bar—such marks are absolutely prohibited.

Trademark Application of "Device Ashok Chakra" Trademark

Examination Report of "Device Ashok Chakra" Trademark

Shape of Goods-Section 9(3)

Shape Resulting from Nature of Goods

Marks consisting exclusively of a shape that results from the nature of the goods themselves cannot be registered.

Example: a simple cylindrical bottle for water. The reply must argue that the shape has a distinct trade dress beyond its natural function.

Trademark Application of "Shape Of Goods Of Bottle by Research And Production Company Melt Water Uab" Trademark

Examination Report of "Shape Of Goods Of Bottle by Research And Production Company Melt Water Uab"

Shape Necessary to Obtain a Technical Result

A mark consisting of a shape that is dictated by a technical function is not registrable.

For example, a specific gear shape essential for mechanical function. Reply requires showing that the shape is non-functional and serves branding purposes.

 Shape Giving Substantial Value to the Goods

Shapes that give substantial value to the goods (like ornamental or aesthetic features that themselves add consumer value) are barred.

Example: a unique artistic jewelry shape. To overcome, one must argue that the shape functions as a source identifier rather than merely aesthetic.

Trademark Application of "Shape Of The Goods by New Bharath Enterprises" Trademark

Examination Report of "Shape Of The Goods by New Bharath Enterprises"