Trademark Objection Reply in India
Sections 9 and 11, Trade Marks Act, 1999 · Rules 33, 115 and 119, Trade Marks Rules, 2017
A trademark objection reply answers the examination report the Trade Marks Registry issues on an application. It must be filed within one month of receiving the report, or the Registrar may treat the application as abandoned (rule 33(4), Trade Marks Rules, 2017). If the reply does not settle every objection, a hearing must be offered before any refusal (rule 33(6)).
- Reviewed by
- Registered Trade Marks Agent
- Last updated
- Deadline confirmed first. The reply date is diarised the day the report arrives.
- Arguments built on the record. Cited marks, their status and goods checked before we write.
- Evidence prepared properly. Affidavits in the rule 120 format, with exhibits indexed the way examiners read them.
- Hearing attended. A registered agent argues the case if a hearing is fixed.
- Vashi, Navi MumbaiOur office, Sector 30A
- Since 2008Filing with IP India
- Objections handledReplies and hearings by a named professional
- International filingMadrid, PCT and direct filing
Trademark objection reply at a glance
- Grounds
- Section 9 (absolute) and Section 11 (relative), Trade Marks Act, 1999
- Reply deadline
- One month from receipt of the examination report (rule 33(4))
- Status on IP India
- Objected
- If not resolved
- Show cause hearing, which may be held by video (rules 33(6) and 115)
- After a refusal
- Review within one month (rule 119) or appeal to the High Court within three months (section 91)
What is a trademark objection?
A trademark objection is the examiner’s statement of why the application cannot be accepted as filed. Under rule 33(1) the Registry examines every application and searches the register for identical or similar earlier marks; under rule 33(2) any objection is sent to the applicant as an examination report, and the IP India status changes to Objected. The report quotes the sections relied on and, for a Section 11 objection, lists the earlier marks the examiner found.
An objection is not a refusal. It opens a written exchange with the Registry, and many objections are overcome with a well-argued reply, evidence of use or a narrower specification. What matters is that the reply answers every ground raised, on time, with the right evidence attached.
If you are still working out which kind of objection you have, our guide to section 9 vs 11 explains the difference between absolute and relative grounds. This page covers the reply itself: its format, the evidence for each ground, the hearing and what to do after a refusal.
What are the common grounds for a trademark objection?
These are the grounds an examiner can raise on an application. Section 11(5) keeps two relative grounds, a well-known earlier mark (11(2)) and passing off or copyright (11(3)), for opposition by the earlier owner, so an examination report under Section 11 is normally a Section 11(1) objection.
| Objection | Section | How it is usually answered |
|---|---|---|
| Lacks distinctive character | 9(1)(a) | Show the mark is invented or arbitrary for the goods, or that it had become distinctive through use before the filing date (proviso to Section 9(1)) |
| Descriptive of the goods or services | 9(1)(b) | Show the mark only suggests a quality, read as a whole; offer a disclaimer of a descriptive word; file evidence of acquired distinctiveness |
| Customary or generic term | 9(1)(c) | Show the term is not the ordinary word for the product in the trade, with dictionary and market evidence |
| Likely to deceive or confuse | 9(2)(a) | Restrict the specification so that the meaning of the mark matches the goods |
| Religious, scandalous or prohibited matter | 9(2)(b), (c), (d) | Explain the meaning and context of the word or device, or amend the mark where the law allows; names and emblems under the Emblems and Names Act, 1950 cannot be argued away |
| Shape of goods | 9(3) | Show the shape is not dictated by the nature of the goods, a technical result or the value it adds |
| Similar earlier mark | 11(1) | Compare the marks as a whole, distinguish the goods and trade channels, rely on honest concurrent use (Section 12) or prior use, or obtain the earlier owner’s consent (Section 11(4)) |
| Formal requirements | Rules | Correct the applicant details, file the user affidavit or power of attorney, or clarify the specification by a request on Form TM-M (rule 37) |
What is the format of a reply to a trademark examination report?
There is no prescribed form for the reply itself; it is filed online against the application. A reply that the examiner can accept quickly follows the report’s own structure. This is the layout we use.
| Part of the reply | What it contains | Why it matters |
|---|---|---|
| 1. Particulars | Application number, mark, class, applicant, date of the examination report and the date it was received | Ties the reply to the right file and shows it is within the one-month period of rule 33(4) |
| 2. Background | Who the applicant is, what it sells under the mark, and since when, in a few lines | Gives the examiner the commercial context before the legal points |
| 3. Reply to each Section 9 point | The ground quoted, then the answer: meaning of the mark as a whole, why it is not descriptive, any disclaimer offered, and evidence of use before the filing date | The proviso to Section 9(1) counts only distinctiveness acquired before the application date |
| 4. Reply to each Section 11 point | For every cited mark: its number, owner, status, goods and a side-by-side comparison with yours; then the legal answer (no likelihood of confusion, prior use, Section 12, consent) | An unanswered citation is treated as an unanswered objection |
| 5. Amendments offered | Any deletion or limitation of goods, disclaimer or correction, with the request on Form TM-M | Rule 37 allows narrowing, not widening, and no substantial change to the mark |
| 6. Evidence index | A numbered list of the affidavit and exhibits, cross-referenced to the paragraphs that rely on them | Lets the examiner check each claim against a document |
| 7. Request | Acceptance and advertisement of the application; if the Registrar is not satisfied, an opportunity of hearing | Rule 33(6) requires a hearing where the reply is not satisfactory or the applicant asks for one |
| 8. Signature | Signed by the applicant or its registered trade marks agent on Form TM-48 authority | An unsigned or unauthorised reply can be ignored |
What evidence answers each type of objection?
Evidence goes in by affidavit with exhibits. Match it to the ground: sales figures answer a distinctiveness objection, but do little against a near-identical earlier mark for identical goods.
| Ground | Evidence that answers it | Points to watch |
|---|---|---|
| Section 9(1)(a) or (b): not distinctive, descriptive | Dated invoices across years and states; annual sales and advertising figures certified by a chartered accountant; dated packaging, catalogues and advertisements; trade or customer declarations that the mark identifies you | Only use before the application date counts under the proviso to Section 9(1). Evidence after filing does not help this ground |
| Section 9(1)(c): customary in the trade | Dictionary entries, trade literature and competitors’ product listings showing the word is not the common name for the goods | One competitor using the word is not proof that it is customary, but several are hard to answer |
| Section 9(2)(a): deceptive | A narrowed specification, and an explanation of the meaning of the mark for the goods that remain | A mark that says "silk" for cotton goods is answered by limiting the goods, not by argument |
| Section 11(1): earlier mark | Register extracts for each cited mark; side-by-side comparison; evidence of your own use from a date before the cited mark; a consent or coexistence letter from its owner | If a cited registration has not been used for five years and three months, a separate rectification for non-use (Section 47) may remove it |
| Section 12: honest concurrent use | Proof of how and where you adopted the mark, continuous use since, and the absence of actual confusion in that period | The Registrar can impose conditions or limits when allowing it |
| Formal objections | Form TM-48 signed by the applicant; user affidavit for a claimed date of first use; DPIIT or Udyam certificate if the fee category is questioned | Most are fixed by a request on Form TM-M under rule 37 |
Affidavits filed with the Registrar follow rule 120: first person, numbered paragraphs, sworn before a notary or other authorised officer, and duly stamped.
How is a trademark examination report answered?
Day 1
Read the report and fix the deadline
We confirm the date of receipt, the one-month reply date and every ground raised.
Days 2 to 7
Check the cited marks
For each earlier mark: its status, owner, goods or services, use in the market, and whether it can be challenged for non-use.
Days 5 to 15
Decide the strategy and collect evidence
Argue, amend the specification, file evidence of use, seek consent, or a combination. Evidence of use goes in by affidavit with supporting documents.
Within one month
File the reply online
The reply addresses each ground in turn, with the evidence and any amendment request attached, and is filed on the IP India portal.
After the reply
Examiner’s decision
If the reply is accepted, the mark is advertised in the Trade Marks Journal (rule 33(5)). If not, the Registry fixes a show cause hearing (rule 33(6)).
Hearing date
Show cause hearing
A registered agent argues the case before the hearing officer, in person or by video conference, and files any further written submissions allowed.
After the order
Acceptance, review or appeal
An accepted mark proceeds to advertisement. A refusal can be reviewed by the Registrar or appealed to the High Court; the time limits are below.
What happens at a trademark show cause hearing?
A show cause hearing is the applicant’s chance to argue the case in person before the Registrar decides. Rule 33(6) of the Trade Marks Rules, 2017 says the Registrar shall give an opportunity of hearing when the reply is not satisfactory or when the applicant asks for one. No application should be refused on an examination report without that hearing being offered.
- How it is listed. IP India publishes a Trade Marks Show Cause List among its hearing cause lists, and the status of the application changes to show that a hearing is due. Check the hearing notice for the date, time and mode.
- How it is held. Rule 115 allows the hearing to be held at the notified date and time at the appropriate office, and its proviso allows it to be held by video conference or other audio-visual means. IP India runs virtual hearing rooms for trade mark matters.
- What is argued. The hearing officer has the report and your reply. The agent summarises the strongest points, deals with what the reply did not settle, and may offer a further limitation of the goods or a disclaimer to meet a remaining objection.
- Written submissions. Where the officer allows it, short written submissions after the hearing record the points made and any amendment offered.
- If nobody attends. Under rule 33(7), if the applicant does not appear and no reply was filed, the Registrar may treat the application as abandoned. Where a reply is on file, the Registrar decides on the record under rule 33(8), so attending is still the safer course.
After the hearing the Registrar passes an order under rule 33(8): acceptance, acceptance with conditions or limitations, or refusal.
What can you do if the trademark application is refused?
A refusal order is not always the end. These are the routes, with the time limits in the Act and Rules. The first step is usually to ask for the written grounds, because the appeal period runs from them.
| Route | Time limit | Where and how | Source |
|---|---|---|---|
| Ask for the grounds of decision | Within 30 days of the decision being communicated | Form TM-M to the Registrar; the date you receive the written statement counts as the date of the decision for appeal | Rule 36 |
| Review by the Registrar | Within one month of the decision, extendable by up to one more month on request | Form TM-M with a statement of grounds | Section 127(c), rule 119 |
| Appeal | Within three months of the order being communicated | The High Court, which replaced the Intellectual Property Appellate Board in 2021 | Section 91, as amended by the Tribunals Reforms Act, 2021 |
| Fresh application | Any time | A new Form TM-A for a modified mark or narrower goods; it takes a new filing date | Section 18 |
Which route fits depends on the reasons in the order. A review suits an error on the record; an appeal suits a disagreement on the law; a fresh filing suits a mark that can be changed.
Which official fees can arise during an objection?
The First Schedule to the Trade Marks Rules, 2017 lists no fee for filing the reply itself or for attending a show cause hearing. Fees arise only for requests made on Form TM-M along the way.
| Government fee, e-filing | All applicants |
|---|---|
| Amendment of an application, extension of time, or a request for the grounds of the Registrar’s decisionForm TM-Mper request | ₹900 |
| Review of the Registrar’s decision (section 127(c), rule 119)Form TM-Mper request | ₹2,700 |
Government fees from Trade Marks Rules, 2017, First Schedule (IP India), as checked on . Statutory fees only; the firm's professional fee is quoted separately in writing.
The same rate applies to every applicant for these requests. See trademark fees for the full schedule.
How long does a trademark objection take to resolve?
The reply itself is due within one month. What follows depends on the Registry’s workload and whether a hearing is needed.
| Stage | Time limit or typical time | Status on IP India |
|---|---|---|
| Examination report issued | Day 0 | Objected |
| Reply filed | Within 1 month of receipt | Objected |
| Reply accepted | Commonly weeks to a few months after the reply | Accepted & Advertised |
| Hearing fixed, if needed | Commonly a few months after the reply | Ready for Show Cause Hearing |
| Order after hearing | After the hearing | Accepted & AdvertisedRefused |
Status names are shown as IP India displays them and can change. Times after the reply are typical, not statutory. What each status means is explained in our guide to trademark status meanings.
Do not let the one-month date pass
If no reply is filed within one month of receiving the examination report, the Registrar may treat the application as abandoned (rule 33(4)). Reinstating an abandoned application is discretionary and uncertain. If the date is close, send the report to us the same day.
Trademark objection FAQs
What is the difference between a trademark objection and an opposition?
An objection is raised by the examiner at the Registry before advertisement. An opposition is filed by a third party after the mark is advertised in the Journal. See trademark opposition.
Can I keep using my brand while the objection is pending?
Yes, with the ™ symbol. An objection does not stop use. If the objection cites an earlier mark, ask us to assess the infringement risk of continuing before you invest further.
What does a Section 9 objection mean?
The examiner considers the mark itself unregistrable as filed: not distinctive, descriptive, customary in the trade, or deceptive. It is answered by argument, a disclaimer, a narrower specification or evidence that the mark has become distinctive through use.
What does a Section 11 objection mean?
The examiner found an earlier identical or similar mark for identical or similar goods or services, with a likelihood of confusion. The reply compares the marks and goods as a whole, and may rely on prior use, honest concurrent use under Section 12, or the earlier owner’s consent.
Is a hearing always held?
No. If the written reply resolves every objection, the mark is accepted without a hearing. A show cause hearing is fixed only when objections remain, or when the applicant asks for one (rule 33(6)).
Can I ask for a hearing in my reply instead of waiting for the examiner’s view?
Yes. Rule 33(6) gives a hearing where the reply is not satisfactory or where the applicant has requested one. We usually ask for it in the closing request of the reply, so the file does not stall if the examiner is not persuaded on paper.
Can I change the goods or services in my application to overcome an objection?
You can narrow or clarify them, for example by deleting goods that overlap with an earlier mark, by a request on Form TM-M under rule 37. You cannot widen the specification or change the mark substantially after filing.
Does evidence of use after my filing date help against a Section 9 objection?
Not for the acquired-distinctiveness argument. The proviso to Section 9(1) asks whether the mark had acquired a distinctive character before the date of application, so the evidence must be dated before that day. Later use can still support other points, such as how the mark is actually used.
What happens if my application is refused after the hearing?
Ask for the written grounds within 30 days (rule 36), then choose between a review by the Registrar within one month (rule 119) and an appeal to the High Court within three months (Section 91). A fresh application with a modified mark is sometimes the faster route.
Official sources
Further reading
- Trademark Objection Under Section 9 vs Section 11: What Is the Difference?Absolute and relative grounds side by side: what triggers each objection and the evidence that answers it.
- Which Trademark Registry Handles Your Application? A City-by-City GuideThe five Registry offices, the rule that decides yours, and a state-by-state and city-by-city table.
- Formalities Chk Pass: What This Trademark Status MeansWhat the Formalities Chk Pass status means, what comes next, why files sit there, and how it differs from Formalities Chk Fail.
- Marked for Exam: What It Means for Your TrademarkWhat Marked for Exam means, what the examiner checks, the possible outcomes, and what to prepare while you wait.