Trademark Objections
How to handle Trademark Examination Reports
Check if your Trademark Application has been Objected
What is Trademark Examination?
After filing a Trademark Application with (TM-A) form it is examined by an officer in the Trade Marks Registry.
The objective is to ensure that the mark complies with the trademark rules. For example the Trademark Must not be too similar to an already existing Trademark. All the Findings will be explicitly mentioend in the Examination Report.
If the Examiner finds issues, an Examination Report is issued citing grounds of 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.
If Objection(s) has been raised in the Eamination Report, they have to be replied to. After which the Application will move to Trademark Hearings.
How much does it Cost?
Trademark application examination costs vary based on the type of applicant and the complexity of the case. Prices vary from ₹4,000 - ₹30,000 depending on the quality of the attorney chosen.
In case you got your application filed from a different attorney, and you need to change the attorney, additional fees has to be paid .
| TRADEMARK OBJECTION | |
|---|---|
| TM-P (Optional) | ₹900 |
| Trademark Attorney Cost | ₹4,000 - ₹30,000 |
Documents Required
No Documents are required, to file an examination report. In case you are changin the attorney, Power of Attorney is required.
Brand
A digital copy of trademark to be registered
Trademark Examination Process
The attorney needs to read the Examination Report and prepare a Reply accordingly.
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Read the Examination Report
1-3 Days Our Trademark Attorney will perform a check the availability of the desired name or logo or design and provide you with a Search Report.
To get a Free Trademark Search Report by AI, enter brand name.
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Prepare & File Reply to Examination Report
30 Day Deadline A reply clarifying the issues raised in the Examination Report needs to be prepared and filed within the stipulated time frame. If the reply is not filed on time, the application may be Abandoned.
Questions? Call us on 011-408-44560
What after filing a Examination Reply?
Following Steps are optional, applications may or may not recieve them. You can check your Trademark progress here, Trademark Status
Show Cause Hearings
A TM registration acknowledgement slip with payment details
Opposition
A TM registration acknowledgement slip with payment details
Grounds of Objection
Digital Copies + IPIndia Application Number
1. Absolute Grounds for refusal
The Registrar examines whether the trademark is barred under Section 9 (absolute grounds for refusal). Following are grounds of objection under Section 9:
A. Lack of Ditinctiveness
It means the trademark you applied for is too simple or commonly used for your type of product or service. Because it is so common, customers will not see it as a unique brand name that belongs to one business.
Trademark law does not allow any one business to take exclusive rights over everyday or descriptive words that other businesses may also need to use.
Example: “TECH” for IT services, “FOOD” for a restaurant chain
Reply Strategy
1. Show the mark is naturally unique (Inherent Distinctiveness)
Explain that your trademark is:
- Not descriptive of the product/service
- Not commonly used in the trade
- Creative, coined, or unusual
2. Prove the mark has become distinctive over time (Acquired Distinctiveness)
Even if the name is simple, you can prove that people now associate it only with your business because of long and continuous use.
This helps demonstrate that the mark has gained a “secondary meaning” — meaning customers connect that name specifically with your business.
B. Descriptive Marks
If a filed trademark directly tells people about the type, quality, purpose, value, or origin of the product, it may be refused.
Example:
- Kind – e.g., “BREAD” for bread
- Quality – e.g., “PREMIUM” for clothing
- Purpose – e.g., “PAIN RELIEF” for medicine
- Value – e.g., “BEST PRICE” for retail services
- Geographical origin – e.g., “DELHI SWEETS” for sweets made in Delhi
- Other characteristics – e.g., “100% PURE” for honey
Reply Strategy
Explain that your trademark does not directly describe the product or service. Instead, it only hints or suggests something about it and requires some imagination to understand.
If customers have to think a little to connect the name with the product, it can still work as a trademark.
C. Customary in Current Language or Trade
If a filed trademark is already a regular or customary term used by many businesses for similar goods or services, it cannot be owned by just one person as a trademark.
Example: “ESCALATOR” (generic), “EMAIL” for electronic mail services.
Reply Strategy
Explain that the term is not generic or customary in your industry.
Prove that it is not a standard word used by all businesses for similar goods/services and can still function as a brand name.
Trademark law does not allow any one business to take exclusive rights over everyday or descriptive words that other businesses may also need to use.
Example: “TECH” for IT services, “FOOD” for a restaurant chain
Reply Strategy
1. Show the mark is naturally unique (Inherent Distinctiveness)
Explain that your trademark is:
- Not descriptive of the product/service
- Not commonly used in the trade
- Creative, coined, or unusual
2. Prohibited Marks
A. Deceptive or Confusing Marks
A mark that is likely to deceive or cause confusion cannot be registered
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.
B. Hurt religious sentiments
Marks that may hurt the religious susceptibilities of any class or section of Indian citizens are barred.
For example, using sacred religious symbols in a commercial trademark.
Trademark Application of "Om Durga" Trademark for Tobacco in class 34
Examination Report of "Om Durga" Trademark
Reply Strategy
Replies must argue that the mark is used respectfully, in a non-offensive manner, or provide alternate branding elements to distinguish.
C. Scandalous or Obscene Matter
If the brand name, logo, or tagline includes vulgar, abusive, or offensive content that may hurt public sentiments or go against accepted social values, it will be refused.
Reply Strategy
Replies generally argue that the mark is not offensive to the average person and may rely on dictionary meanings or prior accepted registrations.
D. 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.
Example: the Indian National Flag, or “Mahatma Gandhi.”
No reply can overcome this bar—such marks are absolutely prohibited.
3. Shape of Goods
A. Shape Resulting from Nature of Goods
Marks consisting exclusively of a shape that results from the nature of the goods themselves cannot be registered.
Some products have a natural or standard shape because of the way they are made or used. No single business can take ownership of such basic shapes.
Example: a simple cylindrical bottle for water. The reply must argue that the shape has a distinct trade dress beyond its natural function.
B. Shape Necessary to Obtain a Technical Result
A trademark cannot be registered if the shape of the product is necessary for it to work properly.
For example, a specific gear shape essential for mechanical function. Reply requires showing that the shape is non-functional and serves branding purposes.
C. Shape Giving Substantial Value to the Goods
If customers purchase a product mainly because of its attractive or decorative shape, that shape cannot be monopolised by one business through trademark registration.
Example: a unique artistic jewelry shape. To overcome, one must argue that the shape functions as a source identifier rather than merely aesthetic.
| Ground of Objection | Section | Example | Reply Strategy |
|---|---|---|---|
| Lack of Distinctiveness | Sec. 9(1)(a) | "FOOD" for restaurents | Argue inherent distinctiveness; submit evidence of acquired distinctiveness (ads, invoices, website traffic, consumer recognition, market reports). |
| Descriptive Marks | Sec. 9(1)(b) | “FRESH MILK” for dairy products | Argue the mark only hints at characteristics and is not directly descriptive. |
| Customary in Trade | Sec. 9(1)(c) | “ESCALATOR” or “EMAIL” | Argue mark has stylization/unique logo; provide consumer survey; highlight registrations of similar coined/customary terms. |
| Deceptive of Confusing | Sec. 9(2)(a) | “SWISS CHOCOLATE” made in India | Amend specification; disclaim misleading element; argue overall impression is not deceptive. |
| Hurt Religious Susceptibilities | Sec. 9(2)(b) | Use of deity images for alcohol brand | Argue non-offensive use; submit cultural/market acceptance evidence; if weak, consider brand modification. |
| Scandalous/Obscene Matter | Sec. 9(2)(c) | Vulgar slang words | Argue dictionary meaning/context; rely on existing registrations with similar terms; show that mark is not offensive to an average consumer. |
| Prohibited under Emblems & Names Act | Sec. 9(2)(d) | Indian National Flag, “Mahatma Gandhi” | Absolute bar. Cannot be overcome. Advisable to amend mark. |
| Shape from Nature of Goods | Sec. 9(3)(a)) | Cylindrical bottle for water | Argue trade dress is distinctive; file evidence of acquired distinctiveness. |
| Shape Needed for Technical Result | Sec. 9(3)(b) | Gear shape essential for function | Argue shape is non-functional and ornamental; attach expert affidavit. |
| Shape Giving Substantial Value | Sec. 9(3)(c) | Artistic jewelry shape | Argue branding purpose, not mere ornamentation; prove consumers recognize shape as source identifier. |
2. Relative Grounds under Section 11
Registry also checks similarity with existing marks A trademark shall not be registered if:
- if it is similar to an already existing trademark and is used for similar goods or services and people might think the applied trademark product or service comes from the same company as another existing brand.
Example: “Appele” for mobile cover could be refused for being confusingly similar to Apple. Both in same class
Types of Similarity in Trademarks
Visual Similarity
- When two marks look alike in spelling, lettering style, color, or overall appearance.
- Example: "PEPSI" vs "PEPSIS"
Phonetic Similarity
- When two marks sound similar when spoken, even with different spellings.
- Example: “ZARA” vs. “Zaira” vs “Xara” vs “Jaaraa”
Conceptual Similarity
- When two marks convey the same idea, meaning, or mental association.
- Example: “SUN Pharma” vs. “SURYA Pharma” (both mean Sun).
Structural Similarity
- When the composition, prefix, suffix, or arrangement of words is alike.
- Example: “McBURGER” vs. “McFOOD”. Dominos vs Dmanoj
Schematic Similarity
- When the layout, arrangement, or schematic design of elements (logos, packaging, or label designs) is similar, even if words differ.
- Example: Two shampoo bottles with identical label placement, fonts, and color bands.
Trade Dress / Get-up Similarity
- When packaging, bottle shape, color scheme, or overall presentation is deceptively similar.
- Example: Green background and fonts (Bilseri vs Bisleri).
Device/Logo Similarity
- When figurative/device marks like symbols, icons, or mascots resemble each other
- Example: Two brands using nearly identical Crocodile logos
Series / Associated Similarity
- When someone copies a “family” of marks belonging to one owner.
- Example: McDonald's “Mc Allu Tikki, Mc Maharaja, Mc Chicken v. McPanjabi”
Similarity in Overall Commercial Impression
- Even if marks differ in details, the total impression to consumers may be confusingly similar.
- Example: “Fair & Lovely” vs. “Fair & Glow”.
Frequently Asked Questions
What is a Trademark Objection?
Example: “Fair & Lovely” vs. “Fair & Glow”.
Why do trademark objections happen?
Common reasons include:
- Mark is too common or descriptive
- Similar to an existing trademark
- May confuse customers
- Contains prohibited or offensive words
- Wrong information or documents
Is a trademark objection a rejection?
No, An objection is not a rejection. It is a chance for you to explain or defend your trademark.
Where can I check if my trademark has an objection?
You can check the status on the IP India trademark website.
Status may show: “Objected”.
What is Section 9 objection?
Section 9 relates to absolute grounds, such as:
- Lack of distinctiveness
- Descriptive or common words
- Offensive or prohibited marks
- Functional shapes
Is there a time limit to reply?
Yes. Generally, you should reply within 1 month from the objection report date to avoid abandonment.
What happens if I don’t reply to the objection?
If no reply is filed, the trademark application may be abandoned (closed).
What should be included in an objection reply?
- Legal explanation
- Supporting documents
- Proof of use (if available)
- Sales, ads, or brand recognition
- Affidavit (in some cases)
Can a trademark be accepted after objection?
Yes. If the reply satisfies the examiner, the mark can be:
- Accepted and published in journal, or
- Set for hearing before decision.
What if the examiner is not satisfied with my reply?
The Registry may schedule a hearing where you or your lawyer can present arguments.
How long does objection resolution take?
It can take a few months to over a year depending on:
- Reply Quality
- Hearing Requirement
- Registry backlog
Can I use my trademark during objection?
The Registry may schedule a hearing where you or your lawyer can present arguments.
Is a lawyer necessary for objection reply?
Not mandatory, but highly recommended because legal arguments and evidence are involved.
Does objection mean my trademark will not register?
No. Many trademarks get registered after a proper reply and hearing.
How can I avoid trademark objections?
- Conduct proper trademark search
- Choose a unique brand name
- Avoid descriptive/common words
- File in correct class
- Take professional advice before filing
What is Section 11 objection?
Section 11 relates to similarity with existing trademarks.
If your mark looks or sounds similar to an earlier mark for similar goods/services, it may be objected.
Will the examination report show similar marks?
Yes. If objection is based on similarity, the report usually lists similar existing trademarks with details.