Reply to Examination Report

As and when the trademark examiner reasons his refusal of the registration of application, the examiner’s objections along with aiding statutory provisions are enlisted in a document which is called the Examination Report. If any objection is raised, an official examination report is issued to the applicant clearly listing the objections and the applicant needs to reply to the Examination Report within a stipulated period of thirty (30) days from receipt of such report.

This status signifies that the applicant has not yet submitted their reply to the examination report. The applicant needs to reply to the Examination Report within a stipulated period of thirty (30) days from receipt of such report.

During the process of examination, when examination report is issued and applicant replies to the Examination Report within a stipulated period, the application is either accepted or objected. The status “objected” signifies that the application is under the stage of examination awaiting notice of show cause hearing.

The status “Ready for show cause hearing” signifies that the application will be scheduled for hearing. If the response to the examination report is not satisfactory or where the applicant has requested for hearing, the registrar shall provide an opportunity of hearing to the applicant and according Show Cause notice shall be sent to the applicant informing the date and time for hearing. In case the applicant fails to appear at the scheduled date of hearing, the Registrar may treat the application as abandoned. Where the applicant has submitted his reply to the examination report within the aforesaid period or has appeared in the hearing and made his submissions, the Registrar shall pass an appropriate order.

The reply to the Examination Report should be filed/submit within the period of thirty (30) days from the date of Receipt of such report.

The reply to an Examination Report can be filed either by applicant of the trademark or an trademark agent/ attorney authorised by such proprietor. When the Reply is being filed by the trademark Agent/Attorney, the Reply to the Examination Report should be accompanied with form TM M (duly signed Power of Attorney).

Trademark objections are raised by the Examiner during the process of examination whereas the trademark opposition is raised by the third party with the period of four (4) months from the date of advertisement of the trademark in the journal. The third party may be any person in the public who have an objection against the registration of applied trademark.

If no reply to the examination report is received within the above mentioned stipulated time, the application shall be treated to have been abandoned for lack of prosecution under Section 132 of the Trade Marks Act, 1999.

The objection of non- distinctiveness can be overcome by establishing that trademark in question has acquired a distinctive character as a result of the use made of it or is a well-known trade mark before the date of application for registration.

The objection of trademark in question been descriptive in nature can be overcome by establishing that trademark in question has acquired a distinctive character as a result of the use made of it or is a well-known trade mark before the date of application for registration.

When a trademark is opposed on relative grounds under Section 11 of The Trade Marks Act, 1999 either the trademark in question is proven to be distinct in character, element and origin or else, prior use of the mark has to be proven.

On the Registrar’s refusal to register a trademark, the applicant may file an appeal to the Intellectual Property Appellate Board within three months from the date on which the order or decision sought to be appealed against is communicated to such person preferring the appeal. An appeal may be admitted after the expiry of the period specified, if the appellant satisfies the Appellate Board that he had sufficient cause for not preferring the appeal within the specified period.