Replying to a trademark objection and examination report

Law

Trade Marks Act 1999, ss. 9 and 11

Reply deadline

30 days from receipt

Authority

Trade Marks Registry

If no reply

Application treated as abandoned

What a trademark objection means

Every application filed in Form TM-A goes to an examiner, who checks whether the mark can be registered under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The result is an examination report, uploaded on the Registry's portal and sent by email. When the status reads "Objected", the examiner has found one or more grounds against registration.

An objection is the examiner's preliminary view, not a final decision. The law gives you the right to answer it in writing and, if needed, to be heard in person. A large share of objected applications are accepted after a proper reply. What matters is that the reply deals with every ground actually raised, with reasons and evidence, rather than a generic template.

Common grounds: Section 9 and Section 11

Objections fall into two families.

Section 9 objections are about the mark itself. Section 11 objections are about conflict with someone else's earlier mark. Many reports raise both.

How a strong reply is built

A reply is a legal submission, so its structure matters. We generally cover the following:

• The mark as a whole: marks are compared in their entirety, not by splitting them into parts. A common prefix or suffix shared with a cited mark does not by itself create confusion.
• Phonetic, visual and conceptual differences from each cited mark, set out mark by mark.
• Goods and trade channels: a cited mark in the same class may cover very different goods, sold to different buyers through different outlets.
• Status of cited marks: cited marks that are abandoned, withdrawn, removed or not renewed should not block your application, and we check each one.
• Acquired distinctiveness: under the proviso to Section 9(1), a descriptive mark can be registered if it has acquired a distinctive character through use before the date of application. This needs evidence.
• Honest concurrent use: Section 12 allows the Registrar to register a similar mark where there has been honest concurrent use or other special circumstances.
• Consent of the earlier proprietor: under Section 11(4), a consent letter from the owner of the cited mark can overcome a relative ground objection.
• Amendments: where it helps, narrowing the specification of goods, adding a disclaimer of a descriptive word, or limiting the mark to a colour or device.

Decisions of the High Courts and the Supreme Court on similarity and descriptiveness are cited where they fit the facts, not as padding.

Evidence of use and acquired distinctiveness

If you have been using the mark, evidence makes a reply far stronger. Useful evidence includes dated invoices across years and states, sales figures certified by a chartered accountant, advertising spend, brochures, packaging, website and social media pages with dates, and press coverage. It is filed with a user affidavit sworn by the applicant.

The evidence must match the mark and the goods in the application. Invoices for a different logo, or for unrelated products, do not help and can damage credibility. Where use is recent or limited, the reply relies more on legal argument than on reputation.

The show cause hearing

If the examiner is not satisfied with the written reply, the application is listed for a show cause hearing before a hearing officer. Hearing notices are issued by email and on the portal, and hearings are now conducted by video conference, so you do not need to travel to the Registry office. Your agent presents the arguments, answers the officer's questions and may file additional documents.

Missing a hearing without seeking an adjournment can lead to the application being treated as abandoned. After the hearing, the officer either accepts the mark for advertisement in the Trade Marks Journal or refuses it with reasons. A refusal can be challenged by a review or an appeal to the High Court, which since 2021 hears appeals that earlier went to the IPAB.

Mistakes that lose applications

• Missing the 30-day deadline. The application is treated as abandoned. Restoring it is difficult and not guaranteed.
• Template replies that do not refer to the cited marks or the actual grounds.
• Inconsistent dates of use between the application, the affidavit and the documents.
• Ignoring the email notice, because the applicant assumed the agent would track it, or vice versa.
• Filing a fresh application for the same mark instead of replying, which loses the original filing date and usually meets the same objection.

After the objection is cleared

Once accepted, the mark is advertised in the Trade Marks Journal and third parties have four months to oppose it. If someone does, see our page on trademark opposition. If not, the registration certificate follows. If you have not yet filed and want to reduce the chance of an objection, start with a proper search as part of trademark registration. If the conflicting earlier mark has not been used for years, it may be possible to remove it through rectification.

Fees, timing and what to expect

There is no official fee for filing a reply to an examination report. Professional fees depend on the number of grounds and cited marks, whether an affidavit of use with exhibits is needed, and whether a hearing follows. We quote these in writing at the outset.

On timing, do not wait for day 29. The 30 days run from receipt of the report, and email delivery counts. If evidence of use has to be collected from distributors or accounts, start immediately. After the reply is filed, the Registry may take some months to act on it; the status on the portal moves to "Accepted and advertised" or "Ready for show cause hearing". We monitor this so that a hearing notice is never missed.

Documents you need

To prepare the reply we need:

• The examination report and your application number
• Form TM-48 (authorisation of agent), if we are not already on record
• Date of first use and a short history of the brand
• Dated invoices, packaging and advertisements showing use of the mark
• Sales and advertising figures, preferably certified by a chartered accountant
• Consent letter from the owner of a cited mark, if one is available
• Website, social media and press references showing the brand

How we handle it for you

1. Report review

   We read the examination report and check the status of every cited mark on the register.

2. Strategy call

   We explain the realistic options: argue, amend, seek consent or file evidence of use.

3. Drafting

   The reply and user affidavit are drafted, shared with you for approval and filed online within the deadline.

4. Hearing

   If a show cause hearing is fixed, we attend it by video conference with written submissions.

5. Follow-through

   We track publication in the Journal and the opposition period until registration.

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Frequently asked questions