If you are stuck in such a situation, here is what to do.

Mr. Alok Sharma, a budding entrepreneur from Jaipur, was thrilled to launch his new software company, “InnovateNext Solutions.” He developed a unique project management tool and branded it “QuickSolve.” Believing the name was catchy and representative of his product’s efficiency, he promptly filed a trademark application to protect his brand identity. A few months later, he received an Examination Report from the Trademark Registry. To his dismay, his application was objected to under Section 9(1)(b) of the Trade Marks Act, 1999. The report stated that the mark “QuickSolve” was descriptive of the services offered and lacked the distinctive character required for registration. Mr. Sharma was now in a dilemma, worried about the investment he had made in branding and the future of his company’s identity.

Advice in such cases

Receiving an objection from the Trademark Registry can be disheartening, but it is a common part of the process and can often be overcome with a strategic response.

• Understand the Objection: Carefully read the Examination Report to understand the precise reason for the objection. Section 9(1)(b) objections are raised when the examiner believes the trademark is not capable of distinguishing the applicant’s goods or services from others because it is descriptive or non-distinctive.
• Formulate a Strong Reply: Do not file a generic reply. You must prepare a detailed legal response arguing why your mark is not descriptive but rather suggestive, arbitrary, or fanciful. The goal is to convince the examiner of the mark’s inherent distinctiveness.
• Gather Evidence of Use: If you have been using the trademark for some time before the application date, you can argue that it has acquired a “secondary meaning” or “distinctive character.” This means consumers have started associating the mark exclusively with your products or services.
• 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 of 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.

Applicable Sections of Law

The primary section of law in such cases is from the Trade Marks Act, 1999.

• Section 9(1)(b) of the Trade Marks Act, 1999: This is an absolute ground for refusal of registration. It states that a trademark shall not be registered if it is “devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person.” For example, using the word “SWEET” for sugar would be considered descriptive and non-distinctive.
• Proviso to Section 9(1): This is the key to overcoming the objection. It states that a trademark shall not be refused registration if, before the date of application, it has acquired a distinctive character as a result of the use made of it or is a well-known trademark. This is often referred to as acquiring “secondary meaning.”

If you are the complainant

As the applicant facing the objection, you are the one who needs to take action to defend your application.

• File a Timely Reply: You must file a formal reply to the Examination Report within one month from the date of its receipt. Failure to do so will lead to your application being abandoned.
• Build a Legal Argument: Your reply should argue that your mark is not directly descriptive. For instance, “QuickSolve” does not directly describe project management software but rather suggests a quality or outcome. This makes it suggestive, not descriptive, and therefore inherently distinctive.
• Claim Acquired Distinctiveness: If applicable, submit an affidavit of use along with evidence to show that your mark has become distinctive through extensive and continuous use in the market.
• 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 of 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.

If you are the victim

As the applicant whose mark has been objected to, you can feel like a victim of a complex system. It is crucial to act strategically to protect your interests.

• Do Not Ignore the Notice: The biggest mistake is to ignore the Examination Report. The objection will not go away on its own; your application will simply be marked as abandoned.
• Avoid a Weak or Generic Reply: A simple statement like “my mark is distinctive” is insufficient. Your reply must be backed by legal arguments and, if possible, evidence.
• Preserve All Evidence: From the moment you start using your brand name, keep records of everything—invoices, marketing materials, website analytics, customer reviews, and press mentions. This will be invaluable if you need to prove acquired distinctiveness.
• 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 of 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.

How the police behave in such cases

The police have no role in the trademark application and objection process. This is a civil administrative procedure handled exclusively by the Office of the Controller General of Patents, Designs and Trade Marks (the Trademark Registry). Police intervention only occurs in cases of criminal enforcement against counterfeiting and infringement under the provisions of the Trade Marks Act, which is a separate matter from the registration process.

FAQs people normally have

• What does a Section 9(1)(b) objection really mean?
  It means the Trademark Examiner believes your chosen mark is too generic or descriptive to function as a unique brand identifier. They think it describes the kind, quality, or characteristics of your goods/services rather than pointing to you as the source.
• Can my trademark still be registered after this objection?
  Yes. Many trademarks that initially receive a Section 9(1)(b) objection are eventually registered. Success depends on submitting a convincing reply that either proves the mark’s inherent distinctiveness or shows it has acquired distinctiveness through use.
• What is “acquired distinctiveness” or “secondary meaning”?
  It’s a legal concept where a mark, although originally descriptive, has become so well-known through extensive use and advertising that the public now associates it with a specific company or product. For example, “Booking.com” is descriptive, but it has acquired distinctiveness in the field of online travel booking.

What evidence is required?

To prove acquired distinctiveness, you need to provide substantial evidence of your mark’s use in commerce. This can include:

• An affidavit detailing the history of the mark’s use, including the date of first use.
• Copies of sales invoices, purchase orders, and shipping documents showing the mark.
• Marketing and advertising materials such as brochures, print ads, social media campaigns, and website screenshots.
• Financial statements or annual reports showing advertising and promotional expenditure.
• Media coverage, articles, and press releases mentioning the brand.
• Customer testimonials, affidavits, or survey results demonstrating public recognition of the mark.

How long will the investigation take?

The term “investigation” here refers to the examination process by the Trademark Registry. The timeline can vary:

• Reply Submission: You have one month to file your reply.
• Examiner’s Review: After you file the reply, the examiner will review it. This can take anywhere from a few months to over a year, depending on the registry’s workload.
• Hearing: If the examiner is not convinced by your written reply, a hearing will be scheduled. This allows you or your lawyer to present your case orally.
• Decision: After the hearing, the examiner will issue a final decision to either accept or refuse the application. The entire process from objection to a final decision can take between 6 months and 2 years.

Advocate Sudhir Rao, Supreme Court of India