FAQs: How to draft a Reply to the Examination Report, its Timeline and How to file it

Questions

1. What is the correct flow of Trade Mark Application?
2. What is an Examination Report?
3. How much time does the Registry takes to issue the Examination Report?
4. When does the status show "Formality Check Fail" and what does it mean?
5. If status shows "Formality Check Pass" but no Examination Report or no further progress-what to do?
6. Is there any way to complete the process soon or expedite the complete Process?
7. What types of objections are generally raised?
8. Within how many days must reply be filed?
9. Can we revise the Reply once it is filed?
10. If reply is not filed within timeline, what happens? What's the solution
11. Is condonation of delay allowed for filing reply? What's the solution
12. What if Examination Report says documents for "date of use" are not attached?
13. How to file Reply to Examination Report?
14. Draft Reply Format - Objection under Section 9 (Absolute Grounds)
15. Draft Reply Format - Objection under Section 11 (Relative Grounds)

Solutions

1. What is the correct flow of Trade Mark Application?

Step 1 - Filing of Trade Mark Application

Step 2 - Formality Check - If compliant → Formality Check Pass;

If defective → Formality Check Fail (needs compliance through Filing TM-M)

Example: 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:

a) You are called upon to confine the Trade mark as per the Device mark by way of filing TM-M with requisite fees and filing reply for amendment is not acceptable.

Solution: Always remember that the logo/ Device Mark and the name of Trade Mark should be similar to each other. Suppose your logo is --- alongwith the word PM, and you wrote in the trade mark - Prime Minister, in that case chances are there that you will get such objection from the Registry.

b) You are required to provide Goods/Services as per NICE Classification by way of filing TM-M with prescribed fee.

Solution: Your services should be like what you cover the manufacturing or Services. In one query, someone wrote in the Services - Class 10 - manufacturing of product for reducing the heart attack issues, then Registry raised such objection. Therefore, you should write like Manufacturing of Surgical, medical, dental and like all and cover each and every thing that covers the class 10. From exact class you should check on https://euipo.europa.eu/ec2/ or https://ipindia.gov.in/writereaddata/images/pdf/classification-of-goods.pdf

Step 3 -Send for Vienna Codification(only for device / logo / label marks), not for Word Mark. Figurative elements are classified, Internal, administrative step, and No role of the applicant.

Step 4 - Examination by Examiner: If Registrar has an objection w.r.t similarity/ Identical under Section 11 or its prohibited under Section 9, then Examination report will be issued.

Step 5 - File Reply to Examination - If satisfied with your reply, then application will be accepted for publication in Trade Mark Journal, or if not satisfied then Hearing will be scheduled to give one opportunity to satisfy the Registrar of Trade Mark.

Step 6 - Publication in Trade Marks Journal

2. What is an Examination Report?

An Examination Report is an official document issued by the Trade Marks Registry under Section 18(4) of the Trade Marks Act, 1999, after examining a trademark application.It containsFormal objections (procedural defects), and/orSubstantive objections under Section 9 or Section 11 of the Act.

3. How much time does the Registry take to issue the Examination Report?

There is no fixed statutory timeline, but generally it takes 30-90 days from filing of TM-A, if no formality issues.In some cases, it may take 3-6 months depending on backlog and office.

4. When does the status show "Formality Check Fail" and what does it mean?

"Formality Check Fail" means the application has procedural defects, such asIncorrect applicant details; or Improper class or Non-submission of POA (TM-48) or Incorrect claim of user date or Insufficient fee. The Registry usually provides remarks, and the defect must be rectified by filing a Formality Compliance.

5. If status shows "Formality Check Pass" but no Examination Report or no further progress-what to do?

You may Wait reasonably (up to 2-3 months), orFile a request for status update via email to the concerned Trademark Office, orFiling a request letter through e-filing portal.

Now, the issue is from where we get the email id/ information of the concerned Trade Mark Officer - Solution is to attend Open House session through video conference on every Tuesday and Thursday between 4 to 5.30 P.M, ask your query and ask the email id of the concerned Trade Mark officer and then start follow-up.OR file a request letter through e-filing portal.

6. Is there any way to complete the process soon or expedite the complete Process?

YES, Once you application number is generated, then you can file an expedite application with the Registry with the fees of INR 20,000/- (for Individual/ Start-up/Small Entity) and INR 40,000/- (for all other). In that case, Such an application shall be examined expeditiously and ordinarily within three months from the date of submission of the application. Thereafter, the following proceedings viz. the consideration of response to the examination report, scheduling of show cause hearing, if required, the publication of the application and the opposition thereto, if any, till final disposal of the application shall also be dealt with expeditiously.

7. What types of objections are generally raised?

Common objections include:

(A) Section 9 - Absolute Grounds - i) Mark is descriptive; ii) Mark is generic; iii) Mark lacks distinctive character; iv) Mark indicates quality, quantity, kind, purpose, or value

(B) Section 11 - Relative Grounds - Similar or identical to earlier registered / applied markor Likelihood of confusion or Same or similar goods/services

(C) Formal Objections: User claim not supported or Missing documents or Improper specification of goods/services.

8. Within how many days must reply be filed?

Within 30 days from the date of receipt/upload of the Examination Report(as per Rule 33 of Trade Marks Rules, 2017).

9. Can we revise the Reply once it is filed?

No statutory provision for revising the reply.However additional documents or submissions may be filed during hearing, if allowed.Hence, reply should be comprehensive and complete. However, my personal opinion, if required (because if you do not file it, then may be your application be cancelled, so its better to file it) is to file the revised reply again in the same category Miscellaneous reply.

10. If reply is not filed within timeline, what happens?

The application is treated as "Abandoned" under Rule 33. In that case, my personal opinion is to always says that you did not receive the email correspondence from the Trade Mark Registry (even if you received). And in case, TM Registry proves that they sent an email to you, then press your submission that it was delivered in the SPAM folder and therefore, you were not aware about the receipt of such email and in that case also relied upon various High Court judgements, wherein, it held that receipt of an email into the SPAM/ Junk folder does not treated as valid correspondence/ services, and therefore, fresh opportunity of being heard again be provided.

11. Is condonation of delay allowed for filing reply?

No. There is no provision for condonation of delay for filing reply to Examination Report.Only remedy is to File a fresh application, orIn rare cases, seek writ remedy (exceptional circumstances).

In that case, my personal opinion is to always add one clause after the end of Reply to Examination report, w.r.t Condonation of delay clause and says, I was aware upon the routine check of the status of the mark through website, and no formal correspondence received from the Trade Mark Registry (even if you received). And in case, TM Registry proves that they sent an email to you, then press your submission that it was delivered in the SPAM folder and therefore, you were not aware about the receipt of such email and in that case also relied upon various High Court judgements, wherein, it held that receipt of an email into the SPAM/ Junk folder does not treated as valid correspondence/ services, and therefore, fresh opportunity of being heard again be provided.

12. What if Examination Report says documents for "date of use" are not attached?

You should file Affidavit of Use, supported byInvoices/ GST returns/ Website screenshots/ Advertisements/ Packaging/labels/ Domain Invoice. And file the affidavit along with the reply.

13.  How to file Reply to Examination Report?

Step-by-step:

1. Visit: https://ipindiaonline.gov.in
2. Login → Trademark E-Filing>> New Form Filing >> Miscellaneous Reply >>
3. Select "Reply to Examination Report"
4. UploadReply (PDF) and Supporting documents (if any)
5. Sign digitally and submit

No government fee is payable.

14. Draft Reply Format - Objection under Section 9 (Absolute Grounds)

To,

Registrar of Trade Marks

[insert address]

Sub: Reply to the examination report dated [o] in Application number [o] for the trade mark "[o]" in class [o].

Dear Sir,

We refer to the examination report published on website of Trademark office. Since, we want our mark to get registered at the earliest; we are hereby furnishing our reply on the basis of the examination report published on the trademark office website. The replies are as under:

OBJECTION NO. 1:

The Trade Mark application is open objected on the objection raised under Section 9(1) (b) of the Trade Marks Act 1999, as the mark consists exclusively of words or indications which may serve in trade to designate the kind, quality, of the goods or rendering of the service or other characteristics of the goods.

OUR SUBMISSION:

As mentioned in Examination Report the objection is raised under Section 9 (1) (b) of the Trade Marks Act, 1999, as the mark consists exclusively of words or indications which may serve in trade to designate the kind, quality, of the goods or rendering of the service or other characteristics of the goods, in the instance case, the applied word mark "[o]" which is for [insert class/services].

1. We humbly wish to submit that we do not agree that the Trade Mark is consists exclusively of words or indications which may serve in trade to designate the kind, quality, of the goods or rendering of the service or other characteristics of the goods.

We hereby submit that the mark of the applicant "[o]" is an arbitrary word highly distinctive of the goods it seeks to cover, blended with the Philosophy of the Applicant and is been used by the Applicant from date of application. The Applicant's mark is unusual and never adapted term and does not convey any overt or covert reference to the goods covered under the mark; this inherent uniqueness makes the applicant's mark absolutely distinctive and imparts to the best credentials for registration. It is an established principle of trade mark laws that Invented/coined words adopted as trademarks are inherently distinctive and entitled to highest degree of protection.

2. It is submitted that the word "[o]", even if word "[o]" is descriptive in nature and even if it has a dictionary meaning or even if the individual work is common, still thecombination of two word is a coined word of the Applicant, and has acquired a secondary meaning by virtue of prior, continuous, regular and extensive user as every citizen in India or abroad recognises the mark "[o]".

In support of the contention that if the coined word even if it has dictionary meaning provides distinctive mark or trade mark and the person who has coined it or has been in continuous prior user has a right to protect it, the Applicant has placed reliance upon the following judgments:-

(i) In Globe Super Parts v. Blue Super Flame, AIR 1986 Delhi 245 in which two words "super and flame" which are dictionary words were joined together were declared as coined words and protection was granted.

(ii) Reddaway v. Banham (13) 1896 RPC 218 - here the trade mark was the 'Camel Hair' used in relation to belts prepared from the Camel hairs. Though both the words have the dictionary meaning still it was held that when the words which are descriptive of an article have come to denote the goods of a particular manufacturer he is entitled to restrain others from using them as to deceive purchasers.

(iii) J.L. Mehta v. Registrar of Trade Marks. The trade mark in question was 'Sulekha' having the meaning a woman having "good writing" was though descriptive but since it was being used in connection with fountain pens, nibs etc. the Court came to the conclusion that it is a valid trade mark and injuncted the infringer.

(iv) Laxmikant v. Patel v. Chetanbhat Shah and Anr. the trade mark of the plaintiff was "Mukta Jeevan Colour Lab" whereas the defendant adopted the mark "QSS Mukta Jeevan. Apart from the plea that it has dictionary meaning the other plea taken was that QSS is an abbreviation and accordingly an adjective pre fixed to the name. Though the defendant was carrying on business in the name of QSS Mukta Jeevan Studio but at the time of filing of the suit he was having the business in the name and style of Mukta Jeevan Colour Lab which was identical with the business of the plaintiff. The plea of the counsel for the plaintiff that QSS is an abbreviation and was merely an adjective pre-fixed to the name was accepted and it was held that it is the word Mukta Jeevan which makes distinctive the business name of the plaintiff and it is the continuous user of the plaintiff which has created a property therein linked with the plaintiff. The defendant was injuncted from using the said trade name in pursuance to the action for passing off;

(v) Living Media India Limited vs Jitender V. Jain AndAnr. on 21 May, 2002, VAD Delhi 161, 98 (2002) DLT 430, the word "AAJ" and "TAK" may be individually descriptive and dictionary word and may not be monopolised by any person but their combination does provide a protection as a trademark if it has been in long, prior and continuous user in relation to particular goods manufactured, sold by a particular person and by virtue of such user the mark gets identified with that person. It is so irrespective of the fact whether such a combination is descriptive in nature and has even a dictionary meaning. In such a case any other person may choose any of the two words viz. either "AAJ" or "TAK" as its trade name or mark but it has to prohibited from using the combination of these words as such a user not only creates confusion as to its source or origin but also bares the design or motive of its subsequent adopter.

In view of the above said facts and circumstances, it is most respectfully prayed that the present Application under No. [o] in CLASS [o] for registration of the trademark "[o]" may kindly be accepted for registration.

Also add some judgments depends upon your case or query under Section 9 of Trade Mark Act, 1999:

a) Trademark must be considered as a whole - Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142 - A trademark must be compared as a whole and not dissected into parts. Useful when examiner dissects the mark and labels part as descriptive.

b) Descriptive words can be registered if they acquire distinctiveness - ITC Ltd. v. Britannia Industries Ltd. 2016 (65) PTC 231 (Del): Even descriptive marks are registrable if they have acquired secondary meaning through use. Use when claiming acquired distinctiveness.

c) Coined / Invented words are inherently distinctive - Godfrey Phillips India Ltd. v. Girnar Food & Beverages (2004) 5 SCC 257 - Invented or coined words are inherently distinctive and entitled to strong protection.

d) Mere descriptiveness is not enough; direct reference is required: Automatic Electric Ltd. v. R.K. Dhawan 1999 PTC (19) 81 (Del) - A word is descriptive only if it directly and immediately conveys the nature or quality of goods. Helps counter vague Section 9(1)(b) objections.

e) Use of common dictionary words does not bar registration - M/s. Allied Blenders & Distillers Pvt. Ltd. v. Shree Nath Heritage Liquor Pvt. Ltd. 2014 (59) PTC 561 (Del) - Common words can function as trademarks if used in a distinctive manner.

f) Suggestive marks are registrable - F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. AIR 1970 SC 2062 - Suggestive marks which require imagination are inherently distinctive. Very effective for branding-type marks.

g) Descriptive words in foreign language can still be distinctive: Bigtree Entertainment Pvt. Ltd. v. Brain Seed SportainmentPvt. Ltd. 2018 (73) PTC 115 (Del) - A foreign word is not descriptive unless commonly understood by Indian consumers.

h) Section 9 objections must be reasoned, not mechanical - Renaissance Hotel Holdings Inc. v. B. Vijaya Sai - 2022 SCC OnLine SC 841 - The Registrar must apply mind and cannot raise mechanical objections without analysis. Useful in hearings / writ petitions.

i) Acquired distinctiveness can arise even from short use with strong evidence - Infosys Technologies Ltd. v. Jupiter Infosys Ltd. 2007 (34) PTC 178 (Del) - Extensive promotion and reputation can create distinctiveness even in a short span.

j) Section 9(1)(a), (b) & (c) are not automatic disqualifications - M/s. Skyline Education Institute (India) Pvt. Ltd. v. S.L. Vaswani (2010) 2 SCC 142 - Objections under Section 9 must be tested against consumer perception, not examiner assumption.

k) Burden of proof lies on the Examiner- Re: Application of Hindustan Development Corporation AIR 1955 Cal 519 - Registrar must show how the mark is descriptive or non-distinctive.

l) Long and continuous use overrides Section 9 objection - Marico Limited v. Agro Tech Foods Limited 2010 (44) PTC 736 (Del) - Continuous and extensive use can overcome absolute grounds under Section 9.

Draft language for using the above case laws: "It is a settled position of law that a trademark must be examined as a whole and not dissected (Corn Products Refining Co., AIR 1960 SC 142). Further, even descriptive marks are registrable upon acquisition of secondary meaning (ITC Ltd. v. Britannia Industries Ltd., 2016 (65) PTC 231 (Del)). The impugned objection under Section 9 is therefore unsustainable."

Prayer/Relief Sought:

So, on application of the above principles of distinctiveness, we find that the captioned mark is unambiguously and beyond doubts "distinctive" and request the learned registrar, the registration should be allowed.

In view of the position explained above, the reasons for refusal as indicated in the examination report are not good grounds for refusal and the mark should be accepted. We, therefore, request you to proceed with the application and the same may be advertised in the journal and initiate other actions as required by the Trade Mark Act, 1999.

If for any reasons, the replies furnished by the undersigned do not satisfy the Examiner and need further deliberation and explanation, we would apply for hearing for which the date may be communicated to the undersigned at the above mentioned address.

Yours faithfully.

15. Draft Reply Format - Objection under Section 11 (Relative Grounds)

Use the above draft format as used in above para, however, use the below case laws related to Section 11 of Trade Mark Act objections:

SECTION 11 - RELATIVE GROUNDS - (Similarity, likelihood of confusion, prior marks, etc.)

1. Marks must be compared as a whole, not part-by-part - Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142) - Comparison of marks must be based on overall similarity and general impression, not on individual components.Applicable to Section 11 objections citing similarity.

2. Likelihood of confusion is the key test - Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.(2001) 5 SCC 73 - Likelihood of confusion must be assessed from the perspective of an average consumer with imperfect recollection.Most cited Supreme Court authority on Section 11.

3. Phonetic similarity alone is not decisive - F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd.AIR 1970 SC 2062 - Phonetic resemblance must be evaluated along with visual and structural differences.

4. Co-existence on the Register weakens Section 11 objection - PhonePePvt. Ltd. v. Ezy Services &Anr. 2021 SCC OnLine Del 466 - Where several similar marks coexist, exclusivity cannot be claimed over a common element.Very effective against common-word objections.

5. Common or descriptive elements cannot be monopolised - Lowenbrau AG v. Jagpin Breweries Ltd. 2009 (40) PTC 46 (Del) - No monopoly can be claimed over common or descriptive elements of a mark.

6. Dissimilarity in goods/services reduces confusion - Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. (2018) 9 SCC 183 - Even identical marks can coexist if goods/services, trade channels, and consumer base are different.Extremely useful in examination replies.

7. Honest and concurrent use defeats Section 11 objection - London Rubber Co. Ltd. v. Durex Products Inc. AIR 1963 SC 1882 - Honest and concurrent use is a valid defence against refusal based on prior marks.

8. Registry must show real likelihood of confusion, not mere similarity - Renaissance Hotel Holdings Inc. v. B. Vijaya Sai (2022 SCC OnLine SC 841) - Registrar must apply mind and cannot raise mechanical objections under Section 11.

9. Prior mark must be valid and subsisting - Jolen Inc. v. Doctor & Co. - 2002 (24) PTC 29 (SC) - Registration of prior mark does not automatically bar later mark; surrounding circumstances matter.

10. Deceptive similarity requires probability, not possibility - Parle Products (P) Ltd. v. J.P. & Co., Mysore AIR 1972 SC 1359 - The test is whether confusion is likely, not whether it is possible.

11. Section 11 objections cannot be based on speculative assumptions - Havells India Ltd. v. Panasonic Life Solutions India Pvt. Ltd. 2021 SCC OnLine Del 5326 - Confusion must be supported by factual analysis of goods, consumers, and market conditions.