After filing a trademark application in India, the Trade Marks Registry assigns it to an Examiner who reviews it for compliance with the Trade Marks Act 1999. If the Examiner finds grounds for objection, the applicant receives an Examination Report — formally called a First Examination Report (FER). Responding to this report correctly and within the prescribed time is critical to securing registration.
Key deadline: Under Rule 38 of the Trade Marks Rules 2017, the applicant must file a written reply to the examination report within 30 days of receiving it. Failure to respond may result in the application being treated as abandoned.
Understanding the Types of Objections
Objections in examination reports typically fall under two categories under the Trade Marks Act 1999:
Absolute Grounds — Section 9
These objections relate to the inherent registrability of the mark itself. Common Section 9 objections include:
- The mark is devoid of any distinctive character
- The mark consists exclusively of words that describe the kind, quality, quantity, or geographical origin of the goods/services
- The mark has become customary in the current language or trade practice
- The mark is deceptive or contrary to public morality
Relative Grounds — Section 11
These objections arise because the applied mark is identical or similar to an earlier registered mark or application for similar goods or services. Section 11 objections cite specific conflicting registration numbers from the Trade Marks Registry database.
Note: A single examination report may raise objections under both Section 9 and Section 11, requiring separate arguments to address each ground.
Step-by-Step: How to Draft Your Reply
Read the examination report carefully
Identify every objection raised — the specific section numbers cited, the cited conflicting marks (with registration numbers), and any procedural deficiencies noted.
Search and analyse cited conflicting marks
For Section 11 objections, search each cited mark on the Trade Marks Registry public search portal (ipindiaonline.gov.in) to understand its status, class, specification, and proprietor. Assess the degree of visual, phonetic, and conceptual similarity.
Build your distinctiveness argument (Section 9)
If the objection is that the mark lacks distinctiveness, gather evidence of use, consumer recognition, advertising expenditure, and market presence to demonstrate acquired distinctiveness. If the mark is inherently distinctive, argue this on the basis of its coined or arbitrary nature.
Address similarity objections (Section 11)
Compare your mark with each cited mark on the tests of visual appearance, phonetic sound, and conceptual meaning. Argue differences in goods/services specifications, trade channels, or consumer profile if relevant. Cite decisions of the Registrar and courts supporting your position.
File the reply with supporting documents
File the written reply through the Trade Marks Registry's online portal (tmrpublicsearch.ipindia.gov.in) along with any supporting affidavits, evidence of use, or consent letters. Ensure it is filed within 30 days of the examination report.
What Happens After the Reply?
Once the reply is filed, the Examiner reviews it. If satisfied, the application proceeds to advertisement in the Trade Marks Journal. If the Examiner is not satisfied, a hearing is scheduled. At the hearing, the applicant or their authorised agent appears before the Registrar and presents oral arguments. The Registrar then issues an order accepting or refusing the application.
Common Mistakes to Avoid
- Filing a generic or brief reply without substantive legal arguments
- Missing the 30-day deadline — even a one-day delay can be fatal
- Failing to address all objections raised in the report
- Not citing relevant case law to support your position
- Submitting evidence of use that does not match the applied goods/services
When Should You Seek Professional Assistance?
Examination replies involving Section 11 conflicts, particularly where the cited mark is an active registration held by a competitor, require careful legal strategy. An inadequate reply can result in refusal of the application and may put your brand at risk. It is advisable to engage a qualified trademark attorney for all examination report responses.