An objection is not a rejection. It is the Registry telling you, in writing, why it is not yet willing to accept the mark, and giving you a chance to answer. Many objections are answered on paper with a well-built reply. Others go to a hearing, where you get a second chance to make the case. For how a trademark differs from copyright and patents, see trademark vs copyright vs patent. To avoid objections in the first place, see how to check trademark availability.
What does lose applications is the calendar. The reply window is short, the report often lands in an email inbox nobody watches, and an unanswered report is the easiest way for an application to die. This guide explains what the report says, how each common objection is answered, and what happens at each stage after you reply. If you have not filed yet, start with our trademark registration page.
Where the objection fits in the registration process
After you file Form TM-A, the application is examined. Rule 33(1) requires the Registrar to examine it under the Act and to search the register for earlier marks, registered or applied for, that are identical or deceptively similar for the same or similar goods or services.
The examiner then does one of two things. If there is no problem, the application is accepted and advertised in the Trade Marks Journal under section 20(1). If there is a problem, or the examiner wants to accept the mark only with conditions, amendments or limitations, the objection is communicated in writing as an examination report under Rule 33(2). That is when the portal status changes to objected.
Acceptance and advertisement are not the end either. Once advertised, any third party can oppose the mark, which is a different process run by a private party rather than the Registry. Our trademark opposition page covers that stage.
| Stage | What happens | Rule or section |
|---|---|---|
| Examination | Examiner checks the mark against the Act and searches earlier marks | Rule 33(1) |
| Examination report | Objection or conditional acceptance sent in writing | Rule 33(2) |
| Reply | Applicant responds within one month of receiving the report | Rule 33(4) |
| Acceptance | Reply accepted; application advertised in the Journal | Rule 33(5), section 20(1) |
| Show-cause hearing | Reply not satisfactory, or applicant asks for a hearing | Rule 33(6) |
| Abandonment | No reply, or no reply and no appearance at the hearing | Rule 33(4) and 33(7) |
Section 9: the absolute grounds
Section 9 objections are about the mark itself, not about anyone else's mark. The question is whether the mark can work as a badge of origin at all.
- Section 9(1)(a), devoid of distinctive character. The mark cannot distinguish your goods or services from someone else's. Common for ordinary words, simple shapes, single letters and laudatory phrases.
- Section 9(1)(b), descriptive. The mark consists exclusively of words that describe the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services. A name like "Pure Ghee" for ghee, or a city name for a service sold in that city, falls here.
- Section 9(1)(c), customary in the trade. The mark consists exclusively of words or signs that have become customary in current language or in the established practices of the trade.
- Section 9(2), deceptive or prohibited. The mark could deceive the public or cause confusion, could hurt religious susceptibilities, contains scandalous or obscene matter, or is barred under the Emblems and Names (Prevention of Improper Use) Act, 1950.
- Section 9(3), shapes. Marks consisting exclusively of a shape that results from the nature of the goods, is needed to get a technical result, or gives substantial value to the goods.
Note the word "exclusively" in 9(1)(b) and (c). A mark that combines a descriptive word with something distinctive is not caught just because one part describes the goods. That is often the first line of a reply.
The proviso to section 9(1) is the second line. A mark is not refused under 9(1) if, before the date of application, it acquired a distinctive character because of the use made of it, or is a well-known trade mark. So a descriptive name that you have used heavily for years can still be registered, but you have to prove the use with documents.
Section 11: the relative grounds
Section 11 objections compare your mark with an earlier one that the examiner found in the search. The report usually lists the conflicting marks with their application numbers and classes.
Section 11(1) refuses a mark where, because it is identical to an earlier mark for similar goods or services, or similar to an earlier mark for identical or similar goods or services, there is a likelihood of confusion, including a likelihood of association. Section 11(2) extends protection to a well-known earlier mark even for dissimilar goods, where use would take unfair advantage of it or harm it. Section 11(3) covers marks whose use could be stopped under passing off or copyright law.
Section 11 is answered on the comparison. The examiner has put two marks side by side, so the reply has to show why a buyer of your goods would not mistake one for the other, or why the cited mark should not stand in your way at all.
Common objections and how each is answered
| Objection in the report | What it means | How it is usually answered |
|---|---|---|
| Section 9(1)(a): not distinctive | The mark cannot identify you as the source | Show the mark is coined, arbitrary for these goods or used as a whole that is distinctive; file evidence of use if it has acquired distinctiveness |
| Section 9(1)(b): descriptive | The words describe the goods, their quality or origin | Argue the mark is suggestive rather than descriptive, or not exclusively descriptive; rely on the proviso with dated evidence of use; offer to accept a condition or limitation |
| Section 9(1)(c): customary in the trade | The word is common trade language | Show the term is not in common use for these goods; produce search or market evidence |
| Section 9(2): deceptive or prohibited | The mark may mislead buyers, or uses a protected emblem or name | Narrow the goods so the mark is no longer misleading; remove the prohibited element if needed |
| Section 11(1): similar earlier mark | A cited mark is close in look, sound or idea, for related goods | Compare the marks as a whole; show different goods, trade channels and buyers; restrict the specification |
| Section 11(1) with a lapsed or abandoned cited mark | The cited mark is no longer a live obstacle | Point to the current portal status of the cited mark with a printout |
| Section 11(1) where you used first | You adopted and used the mark before the cited mark | Claim prior use with dated evidence and, where it fits, honest concurrent use under section 12 |
| Section 11(4) route | The owner of the cited mark does not object | File the earlier proprietor's written consent to registration |
| Wrong class or vague specification | Goods described too broadly or in the wrong class | Amend the specification by request in Form TM-M |
| Use date not supported | A use claim was made without the affidavit and documents | File the affidavit of use with supporting documents, as Rule 25(2) requires where use before the filing date is claimed |
Many reports carry more than one objection. Each one has to be answered. A reply that deals well with the section 11 citation and ignores the section 9 point leaves the application exactly where it was.
The reply deadline and how to file
Rule 33(4) gives the applicant one month from the date of receipt of the examination report. Rule 33 does not itself provide a way to extend that period, so plan as if the date is fixed.
The report is issued on the IP India portal and sent to the email address on record. If an agent filed the application, it goes to the agent. That is why a stale email on record, or an agent who has gone quiet, is a real risk.
The reply is filed online through the IP India e-filing portal against the application number. The First Schedule to the Rules does not list a fee for a reply to an examination report, so the reply itself carries no government fee. A request to amend the specification is made separately in Form TM-M.
How a reply is drafted, step by step
- 1. Read the report line by line. List each ground cited, each conflicting mark and its class. Pull the record of every cited mark and note its status, its goods and its owner.
- 2. Decide the strategy for each objection. Argue, amend, prove use, seek consent, or a combination. The choice depends on the facts, not on a template.
- 3. Write the legal argument. For section 9, explain why the mark is distinctive or not exclusively descriptive, and invoke the proviso if you have use. For section 11, compare the marks as a whole: look, sound, meaning and overall impression, then the goods, the buyers and the way the goods are sold.
- 4. Assemble evidence. Dated invoices, advertising material, website and marketplace listings, sales figures and press coverage. Where you claim use before the filing date, the affidavit with documents.
- 5. Offer amendments where they help. A narrower specification, or a limitation the examiner can accept, may remove the objection without giving up anything you need.
- 6. Ask for a hearing if the point is arguable. Rule 33(6) requires the Registrar to give you a hearing where you request one, so you need not wait for the examiner to reject the reply.
- 7. File and keep proof. Save the filing acknowledgement and check that the reply appears on the portal record.
For a word-only filing, the strength of the reply often turns on how distinctive the word is. Our wordmark registration page explains why coined and arbitrary words get through examination more easily than descriptive ones.
The show-cause hearing
If the examiner is not satisfied with the reply, or if you ask for one, Rule 33(6) requires the Registrar to give you an opportunity of hearing. You get a hearing notice with a date. Hearings can be held by video conference, with the link sent to the email address on record, so keep that address current.
The hearing is short and usually turns on one point. For section 9, it is whether the mark is distinctive or has become so through use. For section 11, it is whether the marks and goods are close enough to confuse. Documents you want to rely on should already be on the file.
An adjournment can be asked for, for reasonable cause, in Form TM-M at least three days before the hearing date. No party gets more than two adjournments, and each is for no more than 30 days.
After the hearing the Registrar may accept the mark, accept it with conditions or limitations, or refuse it. Grounds for a refusal or conditional acceptance must be recorded in writing under section 18(5). A refusal can be reviewed by the Registrar on request in Form TM-M, or appealed to the High Court under section 91. Representation at this stage is covered on our trademark hearing page, where our fee for a show-cause hearing starts at ₹7,999 per class.
What happens if no reply is filed
Rule 33(4) says that if the applicant does not respond within one month, the Registrar may treat the application as abandoned. Rule 33(7) adds a second trap: if no reply was filed and the applicant also fails to attend the hearing, the application may again be treated as abandoned.
Abandonment does not stop your business using the name. But the application, and its filing date, is gone. If you file again, the new application carries a new date, and anyone who filed a similar mark in between now sits ahead of you.
If the application is still showing objected and the month has only just passed, get advice at once. What can be done depends on whether the Registry has actually recorded the abandonment and what the file shows.
Common mistakes
- Missing the report. The email went to an old address or to an agent who no longer acts. Check the portal yourself.
- Answering only one objection. Every ground in the report needs its own answer.
- Arguing word against word. Marks are compared as a whole, including their overall impression and the goods they cover, not by striking out shared letters.
- Claiming use without proof. A use date unsupported by an affidavit and dated documents carries little weight.
- Ignoring the cited mark's status. A cited mark that has lapsed, been abandoned or been removed may not be an obstacle at all.
- Over-broad specifications. Filing for a whole class when you sell three products invites citations you could have avoided.
- Skipping the hearing. A filed reply with no appearance leaves the decision to the record alone.
Regikart's CS team, working from Kolkata, Delhi and Bengaluru, drafts objection replies and appears at hearings. The reply fee is quoted in writing before we start, after we have read the report.
Frequently asked questions
How long do I have to reply to a trademark examination report?
One month from the date you receive the examination report, under Rule 33(4) of the Trade Marks Rules, 2017. If you do not respond in that time, the Registrar may treat the application as abandoned.
Is there a government fee to reply to a trademark objection?
No. The First Schedule to the Trade Marks Rules, 2017 does not list a fee for a reply to an examination report. A separate request, such as amending the specification in Form TM-M, carries its own fee.
What is the difference between a section 9 and a section 11 objection?
Section 9 is about the mark itself: it is not distinctive, it describes the goods, it is customary in the trade, or it could deceive. Section 11 is about a conflict with an earlier mark that is identical or similar for the same or similar goods or services.
Can a descriptive trademark still be registered?
Yes, if it acquired a distinctive character through use before the date of application. The proviso to section 9(1) allows that, but the use has to be proved with dated documents such as invoices, advertising and sales figures.
Can I use the ™ symbol while my mark is under objection?
Yes. ™ simply says you claim the mark and can be used while the application is pending. The ® symbol is only for a registered mark, so it cannot be used until the registration certificate is issued.
What if the owner of the cited mark agrees to my registration?
Section 11(4) allows registration where the proprietor of the earlier mark consents. File the written consent with your reply. The Registrar then has discretion to register the mark, and may do so under section 12 where there are special circumstances.
Is a trademark objection the same as an opposition?
No. An objection comes from the Registry during examination, before the mark is advertised. An opposition comes from a third party after the mark is advertised in the Trade Marks Journal. See our trademark opposition page for that process.
What can I do if my application is refused after the hearing?
You can ask the Registrar to review the decision by a request in Form TM-M, or appeal to the High Court under section 91 of the Trade Marks Act, 1999. Read the written grounds first: section 18(5) requires the Registrar to record them.
About the author
Regikart CS Team
Company Secretaries at Regikart. Want to discuss this in the context of your business?
