Examination, objection, opposition: what happens after you file

After you file, the Trade Marks Registry examines your application and issues an examination report. If it raises an objection, you must reply within one month, and may be called for a hearing. Once accepted, the mark is advertised in the weekly Trade Marks Journal, where anyone can oppose it within four months. If there is no opposition, or you win it, the Registration certificate is issued.

This chapter walks through each stage, the time limits set by the Trade Marks Rules, 2017, and the most common reasons for refusal.

The trademark journey at a glance

Stage	What happens	Your time limit
1. Filing	Form TM-A filed; application number issued	—
2. Examination	Examiner checks the mark against the law and earlier marks and issues an examination report	—
3. Reply to objection	You file a written reply if objections are raised	Within one month of receiving the report (Rule 33)
4. Show cause hearing	If the reply does not satisfy the Registrar, a hearing is fixed	Attend on the date given, or seek an adjournment in time
5. Acceptance and advertisement	Mark is published in the Trade Marks Journal	—
6. Opposition window	Any person may file an opposition on Form TM-O	Four months from the Journal date (Rule 42)
7. Counter-statement	If opposed, you file your counter-statement	Within two months of receiving the opposition (Rule 44)
8. Registration	Registration certificate issued	—

There is no fixed overall timeline. An unopposed application without objections can move fairly quickly, while an objected or opposed one can take a year or more. Expedited processing under Rule 34 (see How to file a Trademark application (Form TM-A): documents and fees) brings the examination forward, but objections, hearings and oppositions still take their own time.

What is a trademark examination report?

An examiner at the Registry checks whether your mark can be registered. The result is the examination report, which you can see on the IP India portal against your application number. The status will usually show one of the following:

• Accepted / Accepted and advertised — no objections; the mark goes to the Journal.
• Objected — the examiner has raised one or more objections that you must answer.
• Formalities check fail — something is missing or wrong in the form or documents, to be corrected.

If you do not reply to an objection within one month of receiving the report, the Registrar may treat the application as abandoned under Rule 33. Missing this deadline is one of the most common reasons good brands are lost.

What are the common reasons for trademark objection or refusal?

Absolute grounds — Section 9

Section 9 of the Trade Marks Act, 1999 looks at the mark itself. Objections arise when the mark:

• lacks distinctiveness — it cannot tell your goods apart from others' (for example, a common surname or a simple shape);
• is descriptive — it directly describes the kind, quality, quantity, purpose, value or geographical origin of the goods or services;
• consists of words or signs that are customary in the trade;
• is likely to deceive the public or cause confusion;
• may hurt religious susceptibilities, or is scandalous or obscene;
• is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950;
• is a shape that results from the nature of the goods, is needed to get a technical result, or gives the goods substantial value.

A descriptive or non-distinctive mark is not always a dead end. Under the proviso to Section 9(1), it can still be registered if you show it has acquired a distinctive character through use before the application date, or is a well-known trademark.

Relative grounds — Section 11

Section 11 compares your mark with earlier rights. An objection arises when your mark is identical or similar to an earlier registered or applied-for mark for identical or similar goods or services, so that the public is likely to be confused. Earlier well-known marks and marks protected by passing-off or copyright can also block a later mark.

How do you reply to an examination report?

A reply is a written legal answer filed online against your application. A good reply usually:

• addresses each objection one by one;
• explains why the mark is distinctive or not descriptive for your goods or services;
• for a Section 11 objection, shows how the marks, goods, trade channels or customers differ, or that you used the mark earlier;
• attaches evidence of use, such as invoices, advertisements and sales figures, where relevant;
• offers to narrow the goods or services, or to add a disclaimer on a descriptive word, if that helps.

If the examiner accepts the reply, the mark moves to advertisement. If not, a show cause hearing is scheduled. At the hearing (commonly held by video conference), you or your representative argue the case before a hearing officer, who then accepts or refuses the application. A refusal can be challenged further before the High Court, within the time and procedure the law allows.

What is the Trade Marks Journal?

The Trade Marks Journal is the Registry's official publication, issued online every week. Every accepted mark is advertised in it so that the public can see it and object if they believe it clashes with their rights. In some cases the Registrar may advertise a mark "before acceptance" under the proviso to Section 20(1), for example where a distinctiveness question is best settled with public input.

What is trademark opposition?

Any person — not only a competitor — can oppose a mark by filing Form TM-O within four months of the Journal date. This four-month limit in Rule 42 cannot be extended. The official fee is ₹2,700 per class opposed by e-filing (₹3,000 on paper).

If your mark is opposed:

1. The Registry sends you a copy of the notice of opposition.
2. You must file a counter-statement on Form TM-O within two months of receiving it, or the application is treated as abandoned (Section 21(2) and Rule 44).
3. Both sides file evidence (affidavits and documents) within the time limits in the Rules.
4. A hearing is held, and the Registrar decides whether to register the mark.

When is the Registration certificate issued?

If no opposition is filed within four months, or an opposition is decided in your favour, the Registrar registers the mark and issues the Registration certificate (Form RG-2 under Rule 56). Under Section 23, the mark is registered as of the application date, so the 10-year validity runs from that date. From this point you may use ®.

Key takeaways

• Reply to an examination report within one month, or the application may be treated as abandoned.
• Most objections come from Section 9 (descriptive or non-distinctive marks) or Section 11 (conflict with earlier marks).
• Accepted marks are advertised in the weekly Trade Marks Journal; anyone can oppose within four months.
• If opposed, file your counter-statement within two months; if unopposed, the Registration certificate follows.