Trademark Examination Report, Reply and Hearings: A comprehensive guide

What is an Examination Report?

Once an application is made for the registration of the trademark, an Examination Report containing procedural and substantive objections may be issued by the Trademark Registry (or Trademark office). The Trade Marks Act, 1999 (“Act”) prescribes for the preparation of an Examination Report by the Trademark Office. The Examination Report is prepared by Trademark Examiner as per the guidelines of the Registrar of Trade Marks and issued within a period of 3 to 6 months from the date of filing of the trademark application.

How to read an Examination Report?

Once issued by the Trade Marks Registry, a copy of the Examination Report is sent to the applicant and the applicant is given an opportunity to submit a reply to the objections raised in the report. Moreover, the Report is also uploaded on the website of the Trademark Office and can be accessed through the Trademark Application number.

A reply to the Examination Report has to be filed within a period of 30 days from the receipt of the Report, as per the provisions of the Act. If the reply is not filed within this period, then the application will be deemed to have been lapsed.

As a first step, carefully go through the Report and prepare a list of every objection raised by the Office. It is recommended to reply to each objection individually. The reply must be prepared in accordance with the existing trademark law principles. Seek legal advice and assistance for preparing an adequate reply.

Step	Action	Timeframe
1	Review the Examination Report thoroughly.	Immediately upon receipt
2	Prepare a detailed list of objections.	Within the first week
3	Draft responses to each objection.	By the end of the second week
4	Submit the response to the Trademark Office.	Within 30 days of receipt of the report

Common objections in Examination Report

The objections raised by the Examiner may be procedural or substantive. The procedural objections are those which relate to formalities and classification of goods and services. Substantive objections relate to absolute and relative grounds of refusal contained under Sections 9 and 11 of the Trademarks Act.

Some of the common objections raised in the Examination Report are:

Type of Objection	Description
Procedural Objections	Relate to the formalities and classification of goods and services.
Substantive Objections	Relate to the inherent registrability of the trademark, such as distinctiveness and potential confusion with existing trademarks.

Procedural objections

• Objections relating to the formalities: In many cases, the trademark application does not comply with certain formality requirements, such as document or clarifications required with respect to the details of the trademark application.
• Wrong classification of trademark: The trademarks are classified on the basis of the goods or services they are used in relation to. There are 45 classes of trademarks and each class contains some particular goods and services. While applying for a trademark registration, the applicant has to select the appropriate category to which his product or service belongs. If the applicant selects the wrong category, then an objection is made in this regard in the Examination Report.

Substantive objections

• Non-distinctiveness: Only such trademarks which have a distinctive character and are capable of distinguishing the products or services of one entity from another, can be registered under the Trademarks Act. Section 9 of the Act clearly states that if the trademark is devoid of distinctive character, then it would be an absolute ground for refusal of registration. If the trademarks examiner finds that the trademark lacks distinctiveness, then the registration will be refused.
• Identical or similar trademarks: Section 11 of the Trademarks Act states that trademarks which are identical or similar to existing trademarks in the same category of goods and services and which are capable of creating a confusion in the minds of the customers cannot be registered. The trademark examiner may raise an objection if he believes that the applicant’s trademark is similar or identical to a registered trademark.

Common Objection	Suggested Response
Non-distinctiveness	Provide evidence of distinctiveness or acquired secondary meaning.
Similarity to existing trademarks	Highlight the differences and distinct aspects of your trademark.
Wrong classification	Correct the classification or justify the current classification with explanations.

How to respond to each such objection

• Formality objections: In case of an objection relating to formality requirements, the applicant can file an amended application which complies with the requisite formalities.
• Non-distinctiveness: If the trademark is in fact distinctive (either coined, arbitrary or suggestive), the applicant must submit a reply containing an explanation of how the trademark is distinctive capable of distinguishing the concerned goods or services. If regardless of being non-distinctiveness, the trademark has been used openly, extensively, and for long, the applicant can also submit evidence of extensive use and claim that the trademark has acquired a distinctive character and secondary meaning due to such use.
• Identical or similar trademarks: In a case where the trademark is actually different from the cited marks, the applicant must emphasize on the differences between his trademark and the existing registered trademarks. The difference may relate to visual representation, smell or sound. The applicant can explain the differences in target audience and markets. If the trademarks are indeed identical or similar, the applicant may look for any differences between the products and services under the rival trademarks and highlight that in their Response to the Examination Report. If the trademark is prior in point of adoption or use than the cited trademark(s), the differences should not be explored or highlighted; however, the prior rights of the trademark should be highlighted in the Response to the Examination Report.   
• Conflicting goods or services: If the cited similar or identical trademark is applied for registration in a broad description of goods and services, out of which some descriptions conflict with the cited marks’ description, a business decision should be taken whether the conflicting description should be deleted or retained in the course of business. If it is decided to discontinue the business covering such description, an amendment could also be filed to delete the descriptions that are covered under the cited marks’ descriptions.
• Wrong classification: In such a case, the applicant can request for an amendment to the application to the effect of deleting the items which do not fall within the concerned category. If the applicant is convinced that the trademark has been correctly classified, then the applicant can file a reply explaining how the items fall within the classification specified in the application. The applicant can also emphasize how the trademark is an invented or arbitrary mark. It is imperative to take proper legal advice while deciding the classification of the trademark.

Points to note while responding to Examination Report

• Make sure that the reply is submitted within a period of 30 days of the receipt of the report.
• The reply should be submitted by the trademark applicant or the authorised agent.
• The response can be submitted in-person, through mail, post or can be uploaded online.
• Make sure to submit all the relevant documents and affidavits which support your use case.
• Evidence of distinctiveness of the trademark should be submitted.
• Make sure that the trademark application is made by filling Form TM – 48.

Outcome	Next Steps
Acceptance	Trademark is published in the Trademark Journal.
Rejection	Attend a Show Cause Hearing to defend the trademark.

Hearings and Further steps

If the Reply to the Examination Report is accepted by the Trademark Office, then the trademark is published on the Trademark Journal. However, if the Reply is found to be unsatisfactory, then the Office will issue notice for a Show Cause Hearing where the applicant would be provided with an opportunity to defend the trademark.

The show cause notice specifies the date, time and place of the hearing. The applicant can authorise an agent or a trademark attorney to appear on his behalf in the show cause hearings. The arguments and contentions are presented before the Hearing Officer and the supporting evidence is also submitted. On the basis of such evidence and arguments, the Hearing Officer announces the decision.

The Hearing Officer may still completely object to the registration of the trademark and refuse the same.  For example, the Examiner may outright refuse the registration of a trademark that does not have any distinctive feature, like the mark ‘Sale’, or that is identical to a prior mark in the same class.

The Hearing Officer may also accept the submissions in support of the application or offer a conditional acceptance. The conditional acceptance may state that the trademark can be registered if certain conditions are fulfilled. For example, the Examiner may permit the registration subject to a condition of colour or a disclaimer about the generic components of the trademark. Either of such acceptances may lead the trademark to be published in the Trade Marks Journal.

Conclusion

In conclusion, effectively managing the trademark examination report is pivotal for the successful registration of your trademark. Upon receiving the examination report, it is imperative to scrutinize each objection—be it procedural or substantive—and craft a comprehensive and cogent reply within the 30-day timeframe. Engage with legal expertise to navigate the nuances of trademark law, ensuring your response robustly addresses each point of contention, be it issues of distinctiveness, classification, or similarity to existing trademarks. Remember, the precision of your response can be the deciding factor in the advancement of your trademark application, so prioritize accuracy and thoroughness to enhance your chances of securing your trademark rights.

Article contributed by Mr. Gautam Badlani.