Filing a Strong Reply to Trademark Objection: Section 9 Insights

April 4, 2024

Filing a Strong Reply to Trademark Objection Section 9 Insights

Getting an indicator registered is an essential step in maintaining the logo awesome. However, when submitting an indicator utility, one typically gets an exam document detailing the trademark examiner’s issues. Gaining trademark validation and overcoming demanding situations depend on well dealing with this record. It is obligatory to submitting a respond to Trademark objection  to the government within the given time body. The trademark objection method without difficulty without any hassles. As quickly as you acquire a trademark objection be aware study it thoroughly to investigate the grounds of objection.

Trademark Objection

A trademark objection in India happens while the Trademark Registry raises issues approximately a hallmark software, stopping its immediately registration. This normally occurs due to the fact the mark has ability to

  • infringe upon an present registered trademark, that means it’s too similar and will purpose confusion amongst customers, or
  • violate one of the absolute grounds for refusal outlined within the Trade Marks Act, 1999. These grounds include:
  • Lack of specialty (conventional or descriptive words)
  • Deceptiveness (misleading about the service or product)
  • Similarity to prohibited trademarks or names
  • Immorality or scandal

When an examiner identifies such troubles, they issue an Examination Report detailing the motives for objection.

The applicant then has a particular timeframe, commonly one month to report a TM objection respond addressing the objections. This reply can involve:

  • Providing arguments and evidence to guard the uniqueness of the mark
  • Modifying the utility to differentiate the mark from present ones
  • Abandoning the application if further prosecution seems not going

After Filing a Reply to Trademark Objection, the Trademark Registry makes a dedication regarding whether or not to accept the utility, enhance extra objections, or installation a listening to. In the quit, the objection procedure goals to guard the general public and modern groups through ensuring that registered trademarks are in reality particular and do now not lie to clients.

Reasons for Objection under Section 9 of the Trademarks Act, 1999

Generally, an objection beneath this clause can be made for the subsequent primary motives:

  • Lack of Distinctiveness: It’s possible that a hallmark can not tell one character’s goods or services apart from some other’s. Marks which can be descriptive, widespread, or frequently used terminology within the trade fall below this class.
  • Descriptive Marks: A trademark may also face opposition if it correctly describes the nature, attributes, really worth, starting place, or every other factor of the goods or services. For example, a business enterprise imparting net offerings could don’t forget a name like “Fast Internet” to be descriptive.
  • Deceptive Marks: Trademarks that incorporate content material that might offend spiritual sensibilities or which might be probable to lie to or confuse clients also are open to competition.

Possible Objections under Section 9

Section 9 of the Indian Trade Marks Act, 1999 permits objections to be raised all through trademark software inspection. These objections might also consist of:

  • Descriptive Trademarks: Trademarks which might be deemed too descriptive as a way to differentiate services or products are problem to objections under Section nine(1)(b) of the regulation.
  • Generic Terms (Section nine(1)(c)): Trademarks that comprise phrases which might be often used to explain the goods or services are difficulty to objection.
  • Lack of Distinctive Character (Section nine(1)(a)): Objecting to logos that aren’t particular enough, however also not descriptive enough.
  • Section nine(2) Prohibited Marks: File objections if the trademark infringes upon already registered or well-known logos.

Also, Under Section 9 of the Indian Trade Marks Act of 1999 and the Trade Marks Rules of 2002, there are numerous grounds upon which the Registrar can also refuse the registration of a hallmark. Some of these grounds include:

  • Hurt Religious Sentiments: If a hallmark is in all likelihood to offend the non secular sensitivities of any elegance or section of Indian humans, the Registrar may also refuse to check in it. This clause is meant to limit using emblems that may be seemed disrespectful or offensive to spiritual ideals.
  • Offensive or Obscene Words or Images: Trademarks containing offensive or obscene words or photos can be refused registration. This is to preserve public decency and prevent the usage of emblems that might be taken into consideration morally objectionable.
  • Geographical Names: The use of geographical names as emblems may be refused if it is in all likelihood to deceive or motive confusion regarding the starting place of goods or offerings. This is to prevent the appropriation of geographical names which can be normally associated with certain services or products.
  • International Proprietary Names: Trademarks that include global proprietary names, specially the ones associated with prescription drugs and other regulated merchandise, may be refused registration to avoid confusion or misleading purchasers.
  • Other Grounds: Additionally, there are numerous different grounds described within the Act and Rules that can cause the refusal of trademark registration. These grounds may additionally encompass non-strong point, descriptive nature, generalness, similarity to famous marks, and others.

Striking and Serious Similarities with the formerly Registered or currently Pending Trademarks

Section eleven of the Trademarks Act ambitions to prevent confusion amongst purchasers and shield the rights of trademark owners.

When assessing whether a hallmark is same or resembles an existing one, the Registrar considers different factors consisting of the visible, phonetic, and conceptual similarities among the logos, in addition to the nature of the goods or services for which they’re used. Here are some key factors to recollect concerning Section eleven of Trademarks Act:

  • Identical or Resembling Trademarks: The Registrar will refuse the registration of an indicator if it’s miles identical or intently resembles an present registered trademark or an indicator for which an utility is already pending. This is to keep away from confusion among clients regarding the source of products or offerings.
  • Assessment Factors: The Registrar considers various factors which include visible similarity (how the emblems appearance), phonetic similarity (how they sound), and conceptual similarity (the underlying concept or meaning) among the trademarks. Additionally, the nature of the products or offerings related to the emblems is taken under consideration.
  • Confusion and Deception: The number one difficulty is to save you confusion or deception amongst customers. If the similarity among logos is in all likelihood to reason confusion regarding the origin of products or offerings, the Registrar might also refuse the registration of the trademark.
  • Legal Remedies: Trademark owners can oppose the registration of an indicator in the event that they accept as true with it infringes upon their current rights. They can also take criminal motion in opposition to infringing logos to guard their highbrow assets rights.

How to reply to an objection?

Once Filing a Reply to Trademark Objection is performed then the applicant can be given due be aware approximately the objection as well as the grounds of objection.

  • The first aspect one must do is record a reply to the objection.
  • This should be performed within one month from the date of receipt of the awareness of objection
  • Failure to record an objection within one month will trade the repute of the utility to Abandoned.

When the respond is filed, the Registrar lists the hearing, if his ruling is going in favour of the plaintiff in competition, the trademark is listed to be registered. If it is going towards the plaintiff, the utility for registration is refused. At this point, the plaintiff can file an appeal earlier than Intellectual Property Appellate Board (IPAB):

  • The enchantment need to be filed within three months from the date of the order exceeded by means of the Registrar.
  • If an enchantment is filed after the period of three months, the applicant have to kingdom the purpose for the put off by way of submitting a petition for condonation of postpone with a fine of Rs 2,500. If the reason is prevalent by means of the IPAB the enchantment will be posted for hearing.
  • The submitting have to be completed in line with the regulations prescribed in TradeMarks (Applications, Appeals and Fees to the Intellectual Property Appellate Board) Rules (hereinafter known as Trademark regulations).
  • All of the documentation should be established with the aid of the applicant
  • Every utility must then be advocated by means of the Deputy Registrar at the date of on which the software is presented
  • If the Deputy Registrar finds any defects with the software he’ll give observe of the same
  • The defects ought to be fixed and the software must be resubmitted within 2 months with the aid of the applicant.
  • Failing to accomplish that, the Deputy Registrar will deem the software to be Abandoned
  • If the software is located to be in ordder, the Deputy Registrar will register the case and will allot it a serial quantity.

Once the case is registered the IPAB will pay attention the case. The location of the hearing may be decided upon the jurisdiction under which the case falls in step with rule 2(m). A date may be given for the hearing of the case. The hearing will follow as such.

  • The IPAB will decide on the case based on the submissions made through the 2 events.
  • If one birthday celebration fails to present themselves at the day of the listening to, the IPAB can:
  • Rule at the merits of the case
  • Give an order ex parte (within the absence of 1 celebration)
  • Dismiss the case


Successful Filing a Reply to Trademark Objection & validation necessitates a forceful reaction to a trademark examination report. By analyzing the objections, resolving every issue independently, and abiding by way of pertinent prison provisions, this part of the manner can be completed. Obtaining expert legal suggest and supplying a complete response will appreciably increase the probability of obtaining trademark registration. A considerate answer establishes the muse for destiny monetary success and suggests dedication to maintaining the emblem’s identification.

Mr. Nipun Khanna is the founder of this firm- Startup Solicitors LLP