Replying to the Trademark Examination Report

WHAT IS A TRADEMARK EXAMINATION REPORT?

After an application for trademark registration is made, it is analyzed by trademark examiners. This is done within a period of six months to one year from the date of filing. The officials scrutinize the application forms, the mark and also run their own trademark search.

The trademark office scrutinizes the fulfillment of procedural requirements of the Reply to the Examination Report. Like Form, manner, prescribed fee payment, proper classification, etc.

After this process, they take note of their opinions and analysis about the Scope of the mark getting registered, in which they usually give out reasons as to why the applied mark should not be registered under the Trademark Law. All of these objections along with the statutory provisions are put together in the form of a Trademark Examination Report. The trademark examination report is also put up on the trademark office website along with details of the trademark application.

It is required that the Applicant replies within 30 days from the date of receipt of the examination report. This document is known as Trademark Examination Reply.

The response to an objection in a trademark examination report can be submitted by the trademark applicant. The response can also be made by an agent authorized by the trademark applicant. This authorization is made by a Power of Attorney by the virtue of Form TM48 under the Trade Marks Act, 1999. This response is called “Reply to Examination Report”.

The Reply can be submitted by email by attaching a scanned copy in colour pdf format to .tmr@nic.in OR uploaded online to the website of the trademark office. It could also be submitted in person or by post to the relevant trademark office. Affidavits and documents (as per requirements) should be submitted along with the Reply to the Examination Report.

WHAT ARE THE OBJECTIONS USUALLY RAISED IN AN EXAMINATION REPORT?

OBJECTION PERTAINING TO A FORMAL REQUIREMENT

In such cases, the Applicant must compulsorily comply as these are requirements laid down in the statute and required by the office.

For example, if the trademark office has called for the attachment Form TM48, the Trademark Applicant may submit the same with supporting documents in case an agent is applying for the trademark in place of the Applicant in person or state that the Application is being made by the Applicant in person.

OBJECTION PERTAINING TO INCORRECT CLASSIFICATION

If the objection is because the goods and services mentioned in the application and the trademark class so mentioned are not in consonance, the Trademark Office will object.

It is important to note that it is advisable to get proper legal advice as to the correct classification of goods and service, prior to submitting a Reply to Examination Report for objection as to the wrong classification of trademark class.

OBJECTION 2A

OBJECTION STATING THAT NONE OF THE GOODS OR SERVICES MENTIONED IN THE APPLICATION FALL IN THE CORRECT TRADEMARK CLASS.

The trademark applicant may file a request to correct the class of goods or assert in the form of a statement that as per classification of goods or services published by the Registrar, the goods and services have been correctly classified.

OBJECTION 2B

OBJECTION TO THE EFFECT THAT SOME GOODS OR SERVICES MENTIONED IN THE APPLICATION DO NOT FALL IN THE CLASS.

The trademark applicant may file a request for amendment of the application by deleting items that do not fall in the relevant class. And then subsequently apply for those goods/services separately under the appropriate class(es) OR The applicant can also state that as per classification of goods or services published by the Registrar, all items fall in the class mentioned in the application.