How to Reply to the Trademark Examination Report?

A Trademark is a mark used by the company which helps to create a distinct identity of their product from the rest in the market. A logo, sign, design, words or any other mark which helps to distinguish a product is called a trademark. It is necessary for a company to register their marks under the Trademarks Act, 1999.

However, sometimes a registrar can refuse to register a trademark on the report received by the examination officer on various grounds. In such a case the applicant has a right to file a reply to the Trademark examination report to get his mark registered complying with rules of the Trademarks act.

Hence, this article will discuss in depth about the procedure for filing a reply to the examination report.

Grounds for Objection of Trademark Registration

A trademark examination officer can object or refuse to move forward for the registration of a mark on various grounds which are in violation to the rules of the act.  Such objection may occur due to the following reasons such as:

• No distinctive identity
• Marks which are deceptive and cause confusion or mislead the general public
• Already registered a similar mark
• Disapproved on grounds of accepted standards of morality and decency.
• Detrimental to a particular religion
• Forbidden and restrained under the Emblem & Names Act, 1950
• Wrong/incomplete information in the application
• Wrong filing of trademark form

What do you mean by the term “Trademark Objection”?

A Trademark during the process of examination of a mark may be objected for registration on various grounds. If the examiner is of the view that a particular mark does not comply with the rules of the law, he can pass a refusal order for the same. Such objection is termed as Trademark objection.

Who has the Authority to object a mark?

A Trademark Examination officer is assigned by the trademark registry office that performs the duty to examine the trademark application during the procedure of registration and has the power and authority to object it.

What is a Trademark Examination Report?

A Trademark Examination Report is a report which is generated by an examination officer in which he specifies whether the trademark application is approved or objected by giving reasons along with statutory provisions for the same.  Such a report is made available on the online website of Trademarks office.

Reply to the Trademark Examination Report 

The applicant of the Trademark application has a right to file a reply on the receipt of the examination report. Such a reply can be filed either by him or his agent directly on the website or in person or post. The delegation of this power to the agent by the applicant is specified under the Form TM48 which authorizes the agent by providing a Power of Attorney to file a response under the Trademarks Act, 1999^[1].

The reply to the Trademark Examination report must be supported with all the necessary documents required along with the affidavit.

Documents Required

The documents that are necessary to file a reply to the Trademark examination report are:

1. The brand Logo
2. Trademark Examination report
3. The relevant case laws or precedents
4. Necessary supporting documents needed to proof the distinctive identity of the mark
5. Affidavit

Time Period to file the reply to the Trademark Examination Report

The applicant must file the reply to the Trademark Examination Report within a period of 30 days, the failure of which shall result in the abandonment of his mark.

Reasons Why the applicant must file the Reply to the Trademark examination Report

1. Filing the reply helps the applicant to protect his mark from being abandoned as it gives him a chance to justify why his mark is of a distinctive character.
2. It helps the applicant to get his/her Online Trademark Registration and attain the legal rights specified in the law and to protect it from any infringement.
3. It provides the opportunity to the applicant to proof on the grounds of precedents and case laws that how his mark has a distinctive identity and that it is easily distinguishable from the conflicting marks.
4. The applicant will not be able to get the rights of a trademark for his brand if he fails to reply to the Trademark examination report.
5. Having a trademark will provide a distinctive identity which will in turn help to create the uniqueness of the product and gain goodwill in the market.

Steps that the applicant must follow in order to file a Reply to the Trademark Examination Report

• He must examine and scrutinize the objection in the trademark examination report carefully.
• After understanding and reading it, must draft the reply in an accurate manner using rule of law.
•  File the reply after finalizing it.

Time Extension in case of no reply filed

If the applicant fails to file a reply to the trademark examination report within a period of 30 days, his application shall stand abandoned. However, the applicant under Form TM-M  of the Trademarks Act,1999 can request the registrar to extend the time period of 30 days by giving valid reasons as to why he failed to file the reply within the given time period and after paying a prescribed fee for extension.

Conclusion

Every company needs to register its brand under the trademarks act so as to enjoy the legal rights of their brand. Getting a brand registered not only gives a TM to the brand but also provides equal protection since trademark falls under the protection of intellectual property rights. And protecting a mark helps the company from any sort of infringement. Not only does the registering of a mark prevent the other person to use that mark in their own name, but it also prevents others to even create any mark which is identical to it.

Sometimes, during the procedure of registration, the examination officer may refuse to register a certain mark on various grounds. Therefore, the Trademark Act, 1999 has provided rights to the applicant to file a reply to the trademark examination report so as to get their marks registered.

It helps the applicant to secure their mark and also helps them to clearly point out the most distinctive identity that their mark has. Therefore, The Trademarks Act specifies all the rules that must be followed for getting the mark registered and enjoy the advantages of protecting a trademark from any infringement.

Also, Read: Complete Checklist For Registering a Trademark in India