By - King Stubb & Kasiva on July 18, 2023
Obtaining a trademark registration is an important step in safeguarding the brand’s identity. However, when filing a trademark application, it is typical to obtain an examination report explaining the trademark examiner’s objections. Effectively responding to this report is critical to overcoming difficulties and attaining successful trademark validation. In this article, we will look at the important procedures and factors involved in writing a strong response to an examination report, with a particular emphasis on pertinent legal sections.
Trademark examiners review applications of registrations when they are submitted. This is completed within six months to one year of the date of filing. The application paperwork, the mark, and their trademark search are all scrutinized by the officials. The trademark office examines the Reply to the Examination Report for compliance with procedural criteria. Form, manner, prescribed fee payment, suitable classification, and so forth.
Following this, they take note of their opinions and analyse the Scope of the mark being registered, in which they usually provide reasons why the applied mark should not be registered under Trademark Law. All of these objections, as well as the legislative provisions, are compiled into a Trademark Examination Report. The trademark examination report, together with the data of the trademark application, is also posted on the trademark office website.
The Applicant is obligated to respond within 30 days after receiving the examination report. This is known as a Trademark Examination Reply.
The trademark applicant may submit a response to an objection in a trademark examination report. The response can also be made by an authorised agent of the trademark applicant. This licence is granted through the use of Form TM48 under the Trade Marks Act of 1999. This is known as a "Reply to Examination Report."
The reply can be emailed email@example.com with a scanned copy in colour pdf format or uploaded online to the trademark office’s website. It could also be submitted to the relevant trademark office in person or by mail. Along with the Reply to the Examination Report, affidavits and documents (where required) should be submitted.
When replying to a trademark examination report, it is critical to address each objection separately. Before resolving concerns relating to incorrect categorization, seek legal guidance on the correct classification of products and services. Additionally, request a revision or assert proper classification based on the Registrar’s instructions if none of the goods or services in the application fall under the correct trademark class, also known as ‘Objection 2A.’
For goods/services that do not fit the class, commonly known as ‘Objection 2B,’ either remove them and apply individually or state their alignment with the relevant class as defined by the Registrar. Provide evidence that the mark may be identified or demonstrate acquired distinctiveness through prior substantial use in cases of challenges to lack of distinctiveness. When objections emerge as a result of competing trademarks, carefully argue for the originality of the mark or provide consent/no objection from competing mark owners.
Formality objections address procedural aspects of an application, such as missing forms or documents. These criteria must be met at any cost. If the objection requires specific attachments or forms, ensure that these are delivered as soon as feasible, together with any applicable supporting documents. Failure to meet formalities properly may result in the rejection of a trademark application.
If the objection relates to the wrong classification of goods or services, Section 22 of the Trademarks Act iterates the corrections and amendments process. Accurate classification is critical for ensuring proper mark protection. If the objection is justified, consider requesting a class correction or providing evidence that the goods or services were correctly classified based on the Registrar’s published classification.
Objections to lack of distinctiveness require to prove that the mark may identify the goods or services under Section 18 of the Trademarks Act. It would be necessary to submit evidence that the mark has acquired a unique character as a result of substantial usage before the application date. Include an affidavit and supporting papers to bolster the case.
Under Section 9 of the Trademarks Act, it is critical to submit a detailed answer in circumstances where objections are based on the presence of identical or similar trademarks. Additionally, explaining the mark’s distinction from the cited marks and offering supporting proof is important. To enhance the case, due consideration is required for acquiring consent or a no-objection certificate from the owners of the competing marks.
To properly respond to a trademark examination report, each objection must be addressed individually. Tailoring the responses to the examiner’s unique concerns, providing thorough and clear explanations for each issue is vital. Furthermore, instead of providing generic or blanket rejections, carefully assess each point and provide well-reasoned solutions.
Seeking competent legal guidance in circumstances where the objections are complicated or contain legal intricacies helps ensure appropriate interpretation and compliance with trademark rules. All pertinent documents, affidavits, and supporting evidence that bolster the response and strengthen the case must be included. Furthermore, it is critical to respond within the specified deadline, which is normally within 30 days of receiving the examination report, as a prompt answer is critical to the trademark validation process.
A strong response to a trademark examination report is required for successful trademark validation. This step of the procedure can be handled by analysing the objections, addressing each problem separately, and adhering to relevant law sections. Seeking experienced legal guidance and submitting a thorough answer will greatly improve the chances of securing trademark registration. A well-crafted response demonstrates dedication to maintaining the brand’s identity and lays the groundwork for future economic success.
Before responding to the objection, seek legal guidance on the proper classification. In the response, request a correction or assert proper classification based on the Registrar's rules.
Remove the items and apply separately under the appropriate class or specify their alignment with the relevant class as defined by the Registrar.
Show that the mark may be recognised or that it has developed uniqueness via significant prior usage. To reinforce the response, submit supporting documents and an affidavit.