How to Remove Section 9 Trademark Objection in India

How to Remove Section 9 Trademark Objection in India

How to Respond Section 9 Trademark Objection


To protect a business name or logo or brand identity, trademark registration is an important and formal process to get legal rights and protection. But during the registration process many applicants receive a trademark objection in the examination stage. In trademark objection, Section 9 of the Trade Marks Act, 1999 is most common.


If an IP application receives an examination report for Section 9, no need to worry. In most of these cases, the trademark objection can easily be solved with a proper response and documents that support your trademark application. Through our post, we try to explain the exact reasons behind Section 9 objections and how to remove it with proper reply.


What is a Section 9 Trademark Objection?


A section 9 objection as per the Indian Trade Marks Act, 1999 means that the trademark examiner finds that the applied mark has a lack of distinctiveness or uniqueness. They raised objections because they feel that the proposed trademark is too common or generic or description of product quality.


Generally this type of trademark objection comes under “absolute grounds for refusal” because it uses the inherent property of describing the marks.


Major Reasons for Section 9 Objection


A trademark application faces objection under Section 9 of objections due to these reasons:


  1. The mark describes the product or service
  2. The mark includes common industry terms
  3. The mark is misguiding in nature
  4. The mark has lacks of uniqueness
  5. The mark word commonly used in business

For example, if someone using “Best IT Services” for an IT Service Provider can lead to objection because the line only describes the business.


How to Check If Trademark is Objected


To check the status of a trademark online, you need to visit the official portal of the Government of India i.e., IP INDIA by using the trademark application number.


If application status shows as “objected,” it means the trademark authority has issued an examination report that needs more clarification or proof.


In the examination report, following details are included:


  1. Reason of objection
  2. Relevant Section
  3. Existing Marks, if applicable
  4. Deadline for reply

After getting the examination report, the applicant must reply to the examination report of the proposed trademark within the deadline.


Also read: If you don’t know the how to track the trademark application status, read our information blog for official practical steps,


Steps to Remove Section 9 Trademark Objection


To successfully remove the Section 9 objection needs to prepare a strong draft for reply with supported documents and proof. Steps are:


Step 1: Read the Examination Report Properly


The very first step is to understand the exact reason for the objection. Every rejection has a specific reason that needs to be replied to separately such as descriptive usage or lack of distinctiveness etc.


Step 2: Prepare a Strong Draft To Reply


Objection reply must include the reason why the trademark deserves for registration with support of legal arguments, details of brand usage and other supporting evidence.


The proper response includes:


  1. Describe the distinctiveness of the trademark
  2. Describe how the mark differs from usual expressions
  3. Refer to business reputation, if necessary
  4. Provide relevant evidence

A professional and properly structured objection reply to examination reports increases the chances of acceptance by trademark authority.


Step 3: Includes Supporting Documents


Supporting documents are most important to prove distinctiveness. Important documents that can include at the time objection response are:


  1. Business registration certificate
  2. Screenshots from website
  3. Social media profiles
  4. Invoices/Bills
  5. Advertising material
  6. Affidavit from user

These documents can help the examiner to know the prior usage and public recognition of the trademark.


Step 4: File the Response within Time Period


The reply must be submitted within a time period which is generally 30 days from the date mentioned on the Examination Report.


If the applicant failed to respond within the timeline, they abandoned the application. However if the applicant needs extension on timeline then the applicant needs to request for extension before 30 days using Form TM-56 for 1 month extension.



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Tips for Drafting a Strong Trademark Objection Reply


A well-prepared reply can increase the chances of approval. Some of the important tips that will help are:


Clear Language


Maintain professional tone, simple language, to the point explanation while addressing the examiner's concerns.


More focus on Distinctiveness


Need to explain how customers identify the mark with your business.


Don’t Copy Paste


No need to copy from other objection replies because every examination report is different. So every answer should be unique.


Includes Evidence


If your proposed trademark has already been used in the market, you need to provide its commercial usage to strengthen your reply.


What Happens After Filing the Reply?


After successfully filing the objection responses, the trademark department will review the response and attach supporting documents.


Based on their checking, following possible outcomes will come:


Accepted


If the examiner is satisfied with the response, the trademark application moves forward for publication in the Trademark Journal.


Hearing Notice


In some of the cases, the examiner needs more clarification and can schedule a hearing. The applicant needs to present their arguments.


In some cases, the examiner may schedule a hearing for further clarification. The applicant or attorney must present arguments before the hearing officer.


Refusal


If authority is not satisfied with your responses the application will be refused. But, still some legal solutions are still available depending on the situations.


Importance of Professional Support


While applications for response may be filed independently, expert advice is usually beneficial for responding appropriately to any legal objection made. Experts know everything about the examination procedures and draft submissions according to the objection.


This will be particularly helpful when the mark has been objected to because of its descriptive nature or lack of distinctive character.


Applicants can file the trademark objection reply online through the official portal directly or can take help of an IPR INDIA ONLINE professional to handle on behalf of the applicant that increases the chances of approval because they know the legal consequences.


Conclusion


Getting a trademark objection under Section 9 is most common during the process of trademark registration in India. It does not mean the trademark application is rejected, it means that the examiner needs more clarification that needs to be responded with supporting documents so that your application moves forward successfully.


In the objection cases, the most important things to understand are the examiner's issues and based on that point, preparing a strong draft for the examination report can increase the chances of approval and help to secure trademark protection successfully.