If any or all of the aforementioned objections are present in the examination report, the following essential considerations must be made when composing and submitting a trademark objection reply:

  1. Be comprehensive  

Simply noting that the trade mark applied is distinctive and is phonetically and aesthetically distinct from the cited marks is not optimal when crafting a response to a section 9 or 11 objection. By citing pertinent data, one must make their case for why the trademark being opposed to should be registered. To persuade the examiner that the opposed trade mark is distinctive and capable of registration, it is crucial to be descriptive and thorough. The Registry will never accept blunt, one-sentence responses to an examination report, and doing so will frequently result in marks being withheld.

  1. Include Case laws 

One must quote pertinent case laws and precedents from the Trademark Office, the Intellectual Property Appellate Board, the High Court, or the Hon’ble Supreme Court of India in order to further substantiate the response.

  1. Be Adequate & Consistent

One must properly plan the answer and maintain consistency all throughout. An effective draft would be produced if attention was paid to every minor detail rather than the concerns voiced during the scrutiny process.

Strategies to avoid trademark objections

Although trademark complaints are frequently raised, they can be avoided by remembering the following:

To make sure there are no markings that are identical to or confusingly similar to the mark for which registration is sought, the applicant or the applicant’s attorney must do a thorough trademark search prior to filing for a trademark.

Avoid utilizing common names for the trademark in order to prevent a trademark objection from being raised. Make a distinctive mark or a random mark. The mark that has no significance is an arbitrary one. For instance, the owner of Google created the word “GOOGLE” specifically for his line of work.

Non-indicative names: It’s never a good idea to use a name that describes your line of work. A word that defines the features of the goods or services is one that is descriptive. For instance, since the phrase “Baking” is descriptive, the trademark registrar would file a complaint under section 9 if it were used for a bakery establishment.

Combination of well-known marks: Because JIO and BMW are recognizable companies, it is preferable to avoid using terms like “JIO Sweater” or “BMW Bakery” that combine well-known marks. Making use of such well-known marks or names would provoke trademark disputes and objections, which might eventually result in the trademark being dropped.

Last but not least, one must examine their application for clerical problems while they are applying. To ensure that the goods and services for which registration is requested fall into the appropriate class, one must ensure that all the information presented in the application is truthful and accurate.


Given that India has thousands of trademark registrations, it is typical to get a trademark objection from the Registry. Any additional delay could result in the application of the mark being abandoned, thus a response to the examination report must be submitted within one month of receiving the Trade Marks Registry’s response. While drafting a response, it is important to keep in mind the points mentioned above in order to dispel any objections.

Read more 

Tips to understand the Trademark Objection 

Trademark objection reply process 

Trademark Objection: FAQ

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