Executive Summary

A trademark objection is not a rejection. It is an examination-stage objection raised by the Trade Marks Registry. The applicant is required to file a reasoned legal reply addressing the objections raised in the examination report.

Most objections arise under Section 9 and Section 11 of the Trade Marks Act, 1999.

Section 9 Objection: Distinctiveness and Descriptiveness

A Section 9 objection usually means that the Registry considers the mark descriptive, generic, customary, laudatory or non-distinctive.

For example, a mark such as “Best Coaching” for coaching services or “Healthy Snacks” for food products may be objected to because it describes the service/product instead of functioning as a brand.

A reply to a Section 9 objection should establish that the mark is coined, arbitrary, suggestive, distinctive, or has acquired distinctiveness through use.

Section 11 Objection: Conflict With Earlier Marks

A Section 11 objection is raised when the Registry finds earlier marks that may be identical or deceptively similar.

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, the Supreme Court clarified that deceptive similarity must be assessed by considering the overall facts, including nature of marks, resemblance, goods, class of purchasers and surrounding circumstances.

In Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, the Court applied the test of average intelligence and imperfect recollection. Therefore, even marks with spelling differences may be considered similar if the overall sound or impression is confusing.

Objection Reply Strategy

Examination Report Received
        ↓
Identify Section 9 / Section 11 Objection
        ↓
Analyse Cited Marks
        ↓
Prepare Legal Distinction
        ↓
Collect Evidence of Use
        ↓
File Reply
        ↓
Attend Hearing, if required
        ↓
Acceptance / Refusal / Appeal Strategy

Possible Legal Grounds in Reply

A reply may rely on the following:

  1. the mark is coined or invented;
  2. the mark is inherently distinctive;
  3. the mark is suggestive, not descriptive;
  4. cited marks are visually different;
  5. cited marks are phonetically different;
  6. goods/services are different;
  7. trade channels are different;
  8. consumers are different;
  9. applicant has prior use;
  10. no likelihood of confusion exists.

In Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd., (2018) 9 SCC 183, the Supreme Court recognised that similarity must be examined in commercial context. This principle is useful where the cited mark belongs to a different class, trade channel or business segment.

Conclusion

A trademark objection reply should not be generic. It must respond to the exact objection, distinguish cited marks, rely on legal principles, and where applicable, provide evidence of use. A weak reply may result in refusal or prolonged prosecution.