One of my clients recently had a case which I am explaining below and if you are stuck in such similar situation, here is what to do.
Note: Due to attorney-client privilege, I cannot disclose complete case details or identify the actual parties involved. However, I am sharing the essential facts and legal approach so that if you find yourself in a similar situation, you can understand the available solutions and legal remedies.
TL;DR: A “proposed-to-be-used” trademark application can survive Section 9 and 11 objections even without prior sales. The key is to build a visible, dated trail of genuine intent—domain registration, social media presence, menu designs, and a soft launch—and then present a clear argument distinguishing the conflicting marks’ commercial impression.
Vikram Malhotra, a restaurateur from Indore, filed a trademark application in Class 43 for his upcoming dining concept. He filed it as “proposed to be used.” No sales. No invoices. Not a single plate served yet. The examination report, dated around 12 July 2024, raised two sharp objections. Section 9 refused the mark as non-distinctive, saying it couldn’t distinguish his services. Section 11 flagged a handful of existing registrations that the examiner thought were confusingly close. His first attempt, a bare legal reply prepared with a local general practitioner, did not work. The application stayed stuck in limbo. That’s when Vikram Malhotra approached the office of Advocate Sudhir Rao. The strategy pivoted immediately. Instead of arguing on paper alone, Advocate Sudhir Rao’s office gave him a concrete to-do list well before the hearing. Register the domain. Secure Instagram and Facebook handles. Start posting. List on Google Business. Print branded menus, coasters, stationery. Do a soft launch—even a handful of transactions counted—and photograph everything with dates. The idea was to answer the Registry’s unspoken question: does this brand really exist or is it just a vague idea? For the Section 11 conflict, Advocate Sudhir Rao’s team did not merely state the marks were different. They mapped the cited marks’ actual classes, trade channels, pricing, and the overall commercial impression a consumer would form. The closeness on paper didn’t hold up in practice. The matter was heard virtually under Rule 115 on 18 February 2025. The Registry accepted the application and sent it forward to the Trademark Journal. That favourable outcome turned on the depth of evidence built after filing, and on the precision with which the conflicting marks were distinguished. Advocate Sudhir Rao’s domain-specific experience ensured the application wasn’t just another reply lost in a pile.Key Facts of the Case
- Trademark application filed as “proposed to be used” in Class 43 (restaurant and hospitality services).
- Brand had not launched; no invoices, no sales, zero market presence at filing.
- Examination report raised two objections: Section 9 (lack of distinctiveness) and Section 11 (similarity with marks already on the Register).
- Client proactively built a digital and physical footprint—domain registration, social handles, Google Business listing, menu designs, soft-launch transactions—all dated before the hearing.
- Advocate Sudhir Rao’s office distinguished the cited marks on class of goods, trade channels, pricing, and overall commercial impression.
- Hearing conducted virtually under Rule 115 of the Trade Marks Rules, 2017.
- Application accepted and published in the Trademark Journal.
The Direct Legal Answer
What does a Section 9 objection mean for a proposed-to-be-used mark?
It means the Registry doubts the mark’s inherent capacity to distinguish your services from others. For a mark that hasn’t been used yet, you can’t rely on acquired distinctiveness through sales. But you can show your real, concrete preparation to use the mark. Dated website screenshots, packaging, menu cards, social media activity, and even a small soft launch all build the commercial context that tells the examiner this brand isn’t just an abstract idea. The stronger the material, the better your argument that the mark can distinguish your services when it hits the market.
How do you overcome a Section 11 conflict without prior use?
You don’t need to prove use. You challenge the examiner’s similarity analysis. Break down the cited marks’ specifications, trade channels, consumer base, and visual and phonetic impression. A mark may appear similar on paper but operate in a completely different commercial orbit. Show where the examiner’s assumption of likelihood of confusion breaks down. Point out gaps in classification, target audience, and real-world purchasing behaviour.
Advice in Such Cases
Consult with Lawyer: The very basic and important step to start is talk to Lawyer / advocate. You should not hesitate in paying his consultation fee i.e. might be in range of Rs. 10,000 to 50,000 depends case to case. He is helping you in this situation to come out. He is expert in the domain and can help you explain the procedure which you might have never explored. A good lawyer can get the issues resolved much faster than you think.
Don’t wait for the hearing notice to start building evidence. The moment you file, secure the domain, create handles, print material, and document everything. Timestamps matter. Even a handful of transactions from a soft launch can anchor your mark’s existence. And here’s the thing, a general practitioner who files a trademark occasionally won’t know the subtle ways Registry hearings actually unfold. An advocate who regularly handles trademark objections understands what evidence shifts the examiner’s mind and what arguments fall flat. That specialised experience directly shortens the time from objection to acceptance.
Applicable Sections of Law
- Section 9(1)(a) of the Trade Marks Act, 1999 – absolute grounds for refusal: marks devoid of any distinctive character.
- Section 11(1) of the Trade Marks Act, 1999 – relative grounds for refusal: identity or similarity with earlier marks.
- Section 18(1) of the Trade Marks Act, 1999 – application for registration; allows filing on a “proposed to be used” basis.
- Rule 115 of the Trade Marks Rules, 2017 – procedure for hearing before the Registrar, including virtual hearings.
Limitation Period
For responding to an examination report, the Trade Marks Rules, 2017 prescribe a period of 30 days from the date of receipt of the report. This can be extended by a further one month on request. Missing this deadline may lead to the application being treated as abandoned. Separately, under the Limitation Act, 1963, a suit for trademark infringement must be filed within three years from the date of infringement.
Interim Reliefs Available
During the registration stage, the Registry does not grant interim reliefs like injunctions. However, if the application is refused and an appeal is filed before the High Court, or if an opposition is pending, a party may seek temporary injunctions or stay orders under Order 39 of the Code of Civil Procedure, 1908 to restrain the use of a similar mark. Acting early preserves the value of the mark while the main matter proceeds.
How Courts Typically Approach Such Cases
The Trademarks Registry treats “proposed-to-be-used” applications with a healthy dose of scepticism. It wants to see that the applicant is not merely speculating. Evidence of genuine commercial intent—domain registrations, social presence, packaging, even a small soft launch—tilts the balance. Courts on appeal will examine whether the Registry applied the distinctiveness test correctly and whether the consumer-impression analysis for Section 11 was mechanical or contextual. Consistency in this approach means that well-prepared evidence often decides the matter at the Registry level itself.
Can the Matter Be Settled Out of Court?
Yes. For Section 11 conflicts, the applicant can approach the owners of cited marks to negotiate a consent or coexistence agreement. If the cited mark holder gives written consent, the Registry may accept the application. Even when an opposition is filed, mediation or Lok Adalat settlement is possible. Settlement avoids prolonged hearings and uncertainty, provided the commercial arrangement is properly documented.
Common Mistakes People Make
- Filing and forgetting the application—no domain, no social handles, no digital footprint for a full year. When the objection arrives, there’s nothing tangible to show.
- Relying on a generic legal reply without supplementary evidence. A few paragraphs of argument rarely overcome a Section 9 objection on its own.
- Engaging an advocate who doesn’t regularly handle trademark hearings. Nuances of evidence presentation, classifying goods, and constructing a consumer-impression argument are often missed by general practitioners, weakening the case.
- Ignoring the deadline to respond. Even a one-day delay can cause abandonment if not properly extended.
- Using low-quality undated photos or screenshots. The Registry looks for clear dates and consistency; sloppy evidence invites suspicion.
- Not monitoring the Journal after acceptance. A missed opposition filed by a third party can upend everything if not defended in time.
FAQs People Normally Have
Do I need actual sales to overcome a Section 9 objection on a proposed-to-be-used application?
No, but you need credible evidence of intention to use. Soft-launch transactions, packaging, menus, and a live online presence help immensely.
Can a Section 11 conflict be resolved without giving up my mark?
Often, yes. If you can show the markets, price points, or consumer groups don’t overlap, or if the earlier mark owner consents, the objection can be cleared.
How long does the entire process take from objection to acceptance?
If evidence is in place and the hearing is promptly scheduled, a matter can move to acceptance within 4‑6 months after filing the reply. Delays happen mainly when evidence is absent.
Is a soft launch really enough?
Even a modest soft launch with dated invoices, photographs of the premises, and genuine customers can demonstrate that the brand exists in a commercial sense. It’s not about volume—it’s about reality.
This article is general legal information, not legal advice. Consult a qualified advocate about your specific situation.
Advocate Sudhir Rao, Supreme Court of India