Trademark Objection Reply (Examination Report)

What an examination report is

After a trade mark application is filed, the Registry examines it and issues an examination report setting out the objections it takes. Your application status changes to Objected, and it stays there until a reply is filed. Nothing else happens in the meantime — the mark is not advertised, it is not registered, and the priority you secured by filing is at risk.

The report is a routine stage rather than a rejection. A very large proportion of applications receive one, and most objections are answerable if the reply is specific.

Section 9 — absolute grounds

Absolute grounds go to the mark itself. Section 9 of the Trade Marks Act, 1999 bars marks that are devoid of distinctive character, that consist exclusively of indications describing the kind, quality, quantity, intended purpose, value or geographical origin of the goods, or that have become customary in the trade. Marks likely to deceive or cause confusion are also caught.

The answer is distinctiveness. Either the mark is inherently distinctive when taken as a whole — and coined, arbitrary or suggestive elements are argued in that light — or it has acquired distinctiveness through use, which has to be proved with dated invoices, advertising, packaging and turnover, usually on affidavit.

Section 11 — relative grounds

Relative grounds concern other people's rights. Under section 11 the examiner cites earlier registered or pending marks that are identical or similar for identical or similar goods or services, where there is a likelihood of confusion on the part of the public. A report frequently cites several marks at once, some long dead or abandoned.

A serious reply checks the current status of every cited mark, distinguishes the marks visually, phonetically and conceptually, distinguishes the goods and the trade channels, and where the citation genuinely bites, considers consent or a coexistence arrangement with the earlier proprietor.

The thirty-day deadline

The reply must be filed within thirty days of receipt of the examination report. If it is not, the Registrar may treat the application as abandoned; the fee is gone, the filing date is gone, and anyone who filed after you moves ahead. Reports are served electronically to the address for service on record, so an application handled by an agent who has stopped responding is the classic way this deadline is missed. Check your status on the Registry portal rather than waiting for post.

The hearing, and what follows

If the reply does not satisfy the examiner, a show-cause hearing is fixed before a Hearing Officer, where the arguments and evidence are put orally. The outcome is either acceptance — after which the mark is advertised in the Trade Marks Journal and a window opens for third parties to oppose — or a refusal order, which can be appealed to the High Court. Preparing the hearing from the same file as the written reply matters, because inconsistencies between the two are what get noticed.

Why reply through TCC

The difference between a reply that works and one that does not is almost never eloquence; it is whether each cited mark has been dealt with individually and whether use has actually been evidenced. We do that work, file inside the deadline, and appear at the hearing. If we think the mark is not defensible as filed, we will say so and discuss amending or refiling rather than spending your money on a hopeless reply.