In this article, Deepshikha Sarkar discusses Replying to the Trademark Examination Report.
What is a Trademark Examination Report?
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After an application for trademark registration is made, it is analyzed by trademark examiners.This is done within a period of six months to one year from the date of filing. The officials scrutinize the application forms, the mark and also run their own trademark search.
The trademark office scrutinizes the fulfillment of procedural requirements of the Reply to the Examination Report. Like Form, manner, prescribed fee payment, proper classification, etc.
After this process, they take note of their opinions and analysis about the Scope of the mark getting registered, in which they usually give out reasons as to why the applied mark should not be registered under the Trademark Law. All of these objections along with the statutory provisions are put together in the form of a Trademark Examination Report. The trademark examination report is also put up on the trademark office website along with details of the trademark application.
What is an Examination Report Reply?
It is required that the Applicant replies within 30 days from the date of receipt of the examination report. This document is known as Trademark Examination Reply.
The response to an objection in a trademark examination report can be submitted by the trademark applicant. The response can also be made by an agent authorized by the trademark applicant. This authorization is made by a Power of Attorney by the virtue of Form TM48 under the Trade Marks Act, 1999. This response is called “Reply to Examination Report”.
The Reply can be submitted by email by attaching a scanned copy in colour pdf format to [email protected] OR uploaded online to the website of the trademark office. It could also be submitted in person or by post to the relevant trademark office. Affidavits and documents (as per requirements) should be submitted along with the Reply to the Examination Report.
What are the objections usually raised in an Examination Report?
OBJECTION PERTAINING TO A FORMAL REQUIREMENT
In such cases, the Applicant must compulsorily comply as these are requirements laid down in the statute and required by the office.
For example, if the trademark office has called for the attachment Form TM48, the Trademark Applicant may submit the same with supporting documents in case an agent is applying for the trademark in place of the Applicant in person or state that the Application is being made by the Applicant in person.
OBJECTION PERTAINING TO INCORRECT CLASSIFICATION
If the objection is because the goods and services mentioned in the application and the trademark class so mentioned are not in consonance, the Trademark Office will object.
It is important to note that it is advisable to get proper legal advice as to the correct classification of goods and service, prior to submitting a Reply to Examination Report for objection as to the wrong classification of trademark class.
OBJECTION 2A
OBJECTION STATING THAT NONE OF THE GOODS OR SERVICES MENTIONED IN THE APPLICATION FALL IN THE CORRECT TRADEMARK CLASS.
The trademark applicant may file a request to correct the class of goods or assert in the form of a statement that as per classification of goods or services published by the Registrar, the goods and services have been correctly classified.
OBJECTION 2B
OBJECTION TO THE EFFECT THAT SOME GOODS OR SERVICES MENTIONED IN THE APPLICATION DO NOT FALL IN THE CLASS.
The trademark applicant may file a request for amendment of the application by deleting items that do not fall in the relevant class. And then subsequently apply for those goods/services separately under the appropriate class(es) OR The applicant can also state that as per classification of goods or services published by the Registrar, all items fall in the class mentioned in the application.
OBJECTION PERTAINING TO ABSOLUTE GROUNDS
Section 9, Trade Marks Act, 1999 deals with ABSOLUTE GROUNDS. These objections are primarily related to the mark itself and which are not register-able due to their inherent problems. This ground of refusal is primarily aimed at protecting the interests of general public instead of any specific third party.
As per Sec 9(1) of the Trade Marks Act, 1999 a trademark should be distinctive and non descriptive. That means it should be distinct in itself and it should not be indicating the goods it stands for nor should it be common to the trade in which the Mark would do to business in.
For example, If the wordmark “Apple” is chosen by a company selling Apples then it would be a descriptive trademark but if the wordmark “Apple” is chosen by a company selling computers then it is a non descriptive trademark. Similarly if the word “Salon” is registered by Salon service then no other Salon can use it.
If there is an objection regarding the trademark being non distinctive, the applicant can submit a reply to the ER stating that the Applicant’s mark can be distinguished from the goods and services it stands for OR the Applicant’s mark has acquired distinctiveness due to its extensive use relating to the goods it stands for by long time before the application was even made. If acquired distinctiveness is being claimed then an affidavit containing evidence of the extensive use of Applicant’s mark alongwith documents needs to be filed.
OBJECTION PERTAINING TO RELATIVE GROUNDS
There might be an objection based on the relative grounds of refusal under Section 11 of Trade Marks Act 1999. A trademark faces this objection during registration on the ground of same or similar trademark have been already registered or applied for before the registry of Trade Marks by some third party. The purpose of this grounds of refusal is to protect, rights of the party holding a similar or identical trademark and also to safeguard general public from confusion or deception as to the origin of the goods or services.
In case of objections as to relative grounds of the trademark, the applicant needs to decide carefully if he wants to state that his mark is different and so it has to be registered or if it is similar then an argument of a prior user of the mark can be put forward. In addition, the applicant can also produce consent or no objection from the proprietor of marks cited as conflicting in the examination report.
What is to be kept in mind while Replying to an Examination Report?
The response should not contain only single page blanket denials. The words “structurally, phonetically and visually different from the cited marks” can not be the core of most of the objections. Each objection should be dealt with separately.
FIND A SAMPLE EXAMINATION REPORT ISSUED BY THE CONTROLLER BELOW
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hello sir
I received notice from trademark office (my formalties check failed)
notice as follows:-
While taking up the above application for examination under the provisions of Trade Mark Act, 1999 and Trade Marks Rules 2017, it is observed that application could not proceed to examination because of the following reason/s:
* You are called upon to provide exact goods description in Class 1 the applied goods not fall under class 1 and to changed trademark category “other” to “Single Firm” by way of filing TM-M with fees, to file fresh duly stamped and notarized user affidavit.
The above requirements may please be complied within 30 days from the date of receipt of the letter, failing which the application shall be treated to have been abandoned for lack of prosecution under Section 132 of Trade Marks Act, 1999.
pls suggest me what can I do in that case. how to reply
hi
i need reply for
the objection is raised under S 9 (1) (a) of the trade mark act 1999, as the mark is non-distinctive and as such it is not capable of distinguishing the goods of one person from those of others.
I received an objection of under section 11 of Trade mark ,Whether i Can correction trade mark name in my application ,if possible then tel me the procedure to do same along with alternative solution.
I am new to the filed I applied my trade mark and I received the object S 9 (1) (a)
could you guide how to reply the register of Trade mark.
Gentlemen/Madam,
The above mentioned application has been examined under the provisions of Trade Mark Act,1999 and Trade Mark Rules,2002 and the trade mark applied for is open to objection under the following sections :
1. The Trade Mark application is open to objection on relative grounds of refusal under Section 11 of the Act because the same/similar trade mark(s) is/are already on record of the register for the same or similar goods/services.The detail of same/similar trade marks is enclosed herewith
The objection is raised under S 11 (1) of the Trade Marks Act, 1999, as the mark is identical with or similar to earlier marks in respect of identical or similar description of services and because of such identity or similarity there exists a likelihood of confusion on the part of the public.
2.Other Objection/Requirement/Conditions/Restrictions.
You are required to provide the name of proprietor by way filing tm-m with fees, as the name of Proprietary Firm is provided in place of name of proprietor. Also, you are required to delete “PRE-SCHOOL &” from goods description by way of filing another TM-M with requisite fees. Please note that amendments/corrections cannot be made through mere replies.
Hence, the above application is liable to be refused. Accordingly, you are
requested to submit your response/submissions, if any, along-with supporting documents, with in One Month from the date of receipt of this Examination Report or you may apply for a hearing.
Please Note that if no reply is received or a request for a hearing is applied for within the above mentioned stipulated time ,the said application shall be treated to have been abandoned for lack of prosecution under Section 132 of the Trade Marks Act,1999 and there after the status of application in the computer database shall reflect the factual position
Note:The reply should be submitted online through Comprehensive eFiling services or through email at [email protected]. With the subject as REPLY TO EXAMINATION REPORT.
Thank you for all the detail.
Thank you for all the detail. As I’m new in this field, this helped me to learn how to reply and will try in my ways if I got a chance anytime.
thank you
Hi sir,
I received an objection under trademark S(9)(1)(b), Please suggest what shall i reply to such kind of objection. Our company name is “crapbin”, its an online service. We purchase scrap waste direct from the doorstep.
hi.need your help.i recieved an objection of under section 11.now my agent said we can revert of this objection but thid objection revert fee is 2000rs.i already paid 6700rs.now extra 2000rs m not in a mood to pay.so it true that ppl hv to pay extra penalty if he recieved any objection from govt end.or any other way to sought it out.please suggest soon.thanks in advance
hi
i need reply for
the objection is raised under S 9 (1) (a) of the trade mark act 1999, as the mark is non-distinctive and as such it is not capable of distinguishing the goods of one person from those of others.
After reply to examination report, IPR office automatically uploads “ready for show cause hearing”. Therefore, you can give a generic reply to your examination report and wait for your date of hearing.
hi
i need reply for
the objection is raised under S 9 (1) (a) of the trade mark act 1999, as the mark is non-distinctive and as such it is not capable of distinguishing the goods of one person from those of others.
I need a Counterstatement of Opposition of Trademark under section Section9(2)(a) & Section ll(3)(b). Please help me to draft the counterstatement
Its better if you get it done through a lawyer.