What is Trademark Examination or Trademark Objection ?
After filing an application for trademark registration , the trademark officials specifically trademark examiners, analyse the application and the mark and carry out their own search. After conducting their search they write down their opinions about the mark, mainly point out the reasons why the applied mark shall not be registered. All these objections along with relevant trademark provisions are stated in Trademark Examination Report. These objections must be replied by the applicant within 1 month from the date of receipt of the examination report. This reply is generally known as trademark examination reply .
The Trademark Registry examines a trademark application within a period of six months to one year from the date of filing.
An Examination report is issued in case the Registry has some objection/s with the registration of the application, which may relate to the question of the trademarks distinctiveness, not meeting the qualifications under the act, existing similarity with prior existing trademark registrations, and filing of supporting documents.
If a mark is accepted during examination, the trademark office will issue an acceptance order and the trade mark will be published in the journal.
However, a trade mark is rarely accepted without objections. If registration of a trade mark is objected by the examiner in the examination report, applicant or his agent must respond to it within one month from the date of receiving the examination report. The trademark examination reply must include :
1) An answer to the objections raised.
2) Relevant case laws or precedents of the trade mark office and
3) Supporting documents to prove inherent or acquired distinctiveness.
4) An affidavit of Usage along with supporting documents could also be filed along with the reply to the examination report which shows that the trademark has acquired distinctiveness and is being associated with the goods/services of the applicant due to its prolonged usage.
Filing of a correct and specific reply is pertinent step to secure trademark registration in India.
In case, the objections are not being answered to the satisfaction of the trade mark office through the response submitted to them, the applicant can avail an opportunity of hearing before the Trademark Registrar, where he/she can present submissions orally. The hearing is generally conducted by the Assistant Registrar or Senior Examiners of Trade marks.
It is always advisable that applicant of the trademark hire an attorney for drafting a reply as they are better experienced with relevant trademark laws and caselaws that are pertinent to file the reply efficiently.
In case, an applicant or his/her agent satisfies the objections of the Trademark Office via response or hearing, the examiner or assistant registrar, whoever has heard the matter, orders the publication/advertisement of the Trademark in the Trademark Journal.
Once a Trademark application is accepted or all objections are being removed, it gets published in the Trademark Journal.
What to do in case I have missed my trademark examination reply deadline?
Your deadline is calculated from actual receipt of the examination report. Hence in case the report, for example was issued on 12 December 2015 but is dispatched and received on 17 March 2016. The deadline to file the objection reply will be 17 April 2016 that is the 1 month from the date of receipt of the report.