A trademark objection is a formal notice from the Trademark Registry or a third party, pointing out issues that prevent a trademark’s registration. Under Section 11 of the Trademarks Act, 1999, objections may arise if the mark is similar or identical to an existing trademark or covers similar goods/services. The Examiner or the Controller General may also raise concerns seeking clarification or changes before the application proceeds.

What Constitutes a Trademark Objection?

A trademark objection occurs when the Examiner or a third party finds the application non-compliant with the Trademarks Act, 1999—due to lack of distinctiveness, similarity to existing marks, or procedural mistakes. These objections are outlined in an Examination Report or opposition notice.

Common Reasons for Trademark Objection

Once a trademark application is filed, the Registry reviews it for legal and procedural compliance. If any concerns arise, an Examination Report is issued, mentioning objections under Section 9 (Absolute Grounds) or Section 11 (Relative Grounds) of the Trademarks Act, 1999.

Absolute Grounds for Refusal (Section 9)

A trademark may face refusal if it lacks distinctiveness or includes terms commonly used in the trade. Marks that simply describe the goods or services are not considered suitable for registration.

Relative Grounds for Refusal (Section 11)

Objections under this section occur if the trademark is identical or similar to an existing or well-known mark in India. If it damages or takes unfair advantage of the distinctiveness or reputation of an earlier trademark, registration may be denied.

Types of Trademark Objection

• Incorrect Trademark Form: Using the wrong application form for the filing type, such as individual or company-owned trademarks.
  Example: Filing a single-class trademark using a multi-class form (Form TM-M instead of TM-A).
• Incorrect Applicant Name: Mistakes in the applicant's name like spelling errors or incomplete details.
  Example: Applying under "XYZ Pvt Ltd" while documents show "XYZ Private Limited".
• Failure to File TM-48: Not submitting Form TM-48 (Power of Attorney) when an agent files the application.
  Example: A trademark attorney files the application but forgets to attach TM-48.
• Wrong Classification: Registering the trademark under an incorrect class of goods or services.
  Example: Filing software under Class 25 (Clothing) instead of Class 42 (Technology).
• Incorrect Address: Providing incomplete or incorrect address details in the application.
  Example: Mentioning "XYZ Street" but missing city or pin code.
• Vague Specifications: Giving unclear descriptions of the goods or services related to the trademark.
  Example: Writing "consumer goods" instead of specifying "shampoos and soaps".
• Identical or Similar Marks: Applying for a trademark that is too similar to an already existing or pending trademark.
  Example: Using “Coca-Kola” when “Coca-Cola” is already registered.
• Lacks Distinctive Character: Choosing a mark that isn’t unique or does not set apart your goods/services.
  Example: Applying for "Fresh Fruits" as a trademark for selling fruits.
• Deceptive or Offensive Terms: Using misleading, offensive, or prohibited words in the mark.
  Example: Branding chocolates made in India as "Swiss Chocolates" or using vulgar terms.

Documents Required for Filing a Trademark Objection Reply

To respond to a trademark objection, a properly drafted reply along with supporting documents must be submitted. The essential documents are listed below:

• Authorization – TM-48: If the reply is being filed through an attorney or agent, a duly signed Power of Attorney (Form TM-48) is required.
• Examination Report / Application Number: The Examination Report issued by the Trademark Office mentions the raised objections. This report should be reviewed carefully to draft an appropriate response.
• Identity Proof: Government-approved ID proof of the applicant or authorized agent such as: Passport, Aadhaar Card, Voter ID, or Driving Licence.
• Address Proof: Valid address proof for the applicant or business such as: Utility Bill, Bank Statement, Rent Agreement, or Property Tax Receipt.
• Affidavit of Use: A notarized affidavit confirming that the mark has been in continuous use and holds goodwill in the market.
• Proof of Trademark Usage: Documents showing actual use of the trademark in business, such as: Invoices or Receipts with the mark, Advertisements, Brochures, Website Screenshots, Social Media Pages, Product Labels, or Packaging with the mark.

Process of Filing the Trademark Objection Reply

Step 1: Analyse the Trademark Objection

• Carefully review the Examination Report to understand the objections.
• Identify whether they fall under absolute grounds, relative grounds, or procedural issues.
• Prepare a strong reply with valid evidence and legal points.

Step 2: Draft and Submit the Reply

• Draft a point-wise reply addressing each objection.
• Attach required documents such as:
  • Affidavit of usage
  • Proof of prior usage
  • Evidence supporting distinctiveness
• Refer to relevant sections of the Trade Marks Act, 1999, if needed.

Step 3: Attend the Trademark Hearing (if required)

• If objections are not resolved through the reply, a hearing may be scheduled.
• Appear personally or through a trademark attorney.
• Present arguments, documents, and answer the Registrar’s queries.

Step 4: Publication in Trademark Journal

• If the Registrar accepts the reply or after hearing, the mark is published in the Trademark Journal.
• This allows the public to oppose the mark within 4 months if they wish.

Step 5: Registration

• If no opposition is filed or any opposition is resolved in your favour, the trademark is registered.
• You will then receive the Trademark Registration Certificate, granting exclusive rights over the mark.

Trademark Objection Reply Fees

Trademark objection reply fees start at ₹399*. The exact cost depends on the process’s complexity. Contact our IP experts for detailed pricing.

What Happens if You Don’t Respond to a Trademark Objection?

If you fail to respond on time, your application may be treated as abandoned. You could lose your priority date and need to refile the application.

Do a Proper Trademark Search

A thorough trademark search reduces the risk of objections by ensuring your mark is unique and not already registered. Use Sperso Filings' search tool to avoid conflicts and improve approval chances.

Differences Between Trademark Objection and Trademark Opposition

Stage of Initiation

Trademark Objection happens at the initial stage soon after filing the application. Trademark Opposition occurs later, after the mark is published in the Trademark Journal.

Persons Initiating

Objection is raised by the Trademark Examiner. Opposition is initiated by any third party or public member.

Form of Initiation

Objection comes through the Examination Report by the Registry. Opposition is filed as a Notice of Opposition by the third party.

Form of Submission

Objection report is uploaded online for the applicant’s review. Opposition notice is formally filed by the opposing party with reasons and documents.

Reply for Initiation

Reply to Objection must be submitted within one month. Reply to Opposition must be filed within two months.

Appeal

If an objection reply is rejected, the applicant can file an appeal. In case of opposition, both the applicant and the opponent can appeal the decision.

Fees

Replying to an objection requires no government fee. Replying to an opposition includes a prescribed fee.

Finality of Process

Once objection issues are resolved, the trademark is published in the journal. After opposition is decided, the result is communicated to both parties.