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

Mr. Sameer was excited to launch his new apparel brand. He had chosen the name “Aria Vastra” and approached an online service provider, “WebJuris Consultants,” to file his trademark application. To his surprise, the consultant informed him that a vast majority of trademark applications in India face objections from the Trade Marks Registry and that he would almost certainly need to file an objection reply. The consultant then tried to sell him a more expensive service package that included the future costs of drafting and filing this reply.

Feeling pressured, Mr. Sameer decided to do some preliminary research himself. He checked the official trademark portal for Class 24 (textiles and textile goods). He found that while the word “Vastra,” meaning cloth, was part of several registered trademarks, his complete brand name “Aria Vastra” was unique. The prefix “Aria” was not used by any other brand in that class. This left him wondering whether the consultant’s claim about a 90% objection rate was a genuine warning or simply a tactic to upsell their services.

Advice in such cases

It is true that a significant number of trademark applications receive objections, but claiming a 90% rate is often an exaggeration used as a sales tactic. Objections are a standard part of the examination process, designed to ensure that a trademark meets the legal requirements for registration. Here is some advice:

• Understand the grounds for objection. Objections typically fall under two categories: Absolute Grounds (Section 9 of the Trade Marks Act, 1999) and Relative Grounds (Section 11). Absolute grounds relate to the mark itself being non-distinctive or descriptive (e.g., using the word “Vastra” alone for clothing). Relative grounds relate to the mark being confusingly similar to an existing trademark.
• A composite mark like “Aria Vastra” is judged as a whole. While “Vastra” is descriptive, the unique prefix “Aria” lends distinctiveness to the entire mark. This is a strong point to argue in case an objection is raised.
• Do not pre-pay for objection replies unless the service provider gives a clear and justified reason based on a detailed search report. Many straightforward applications pass without any objections.
• 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 entire process of trademark registration, including objections, is governed by the Trade Marks Act, 1999, and the Trade Marks Rules, 2017.

• Section 9 – Absolute grounds for refusal of registration: This section prevents the registration of trademarks that are devoid of any distinctive character, are descriptive of the goods or services, or have become customary in the current language. An examiner might object to “Vastra” under this section.
• Section 11 – Relative grounds for refusal of registration: This section deals with objections based on a trademark’s similarity to an earlier registered trademark and the likelihood of public confusion. If there were another mark like “Ariya Vastra,” an objection under Section 11 would be likely.
• Section 18 – Application for registration: This section outlines the procedure for filing an application. The Registrar examines the application to ensure it complies with the Act, leading to acceptance or objection.

If you are the complainant

In this context, the “complainant” is the applicant whose trademark application is being processed.

• Conduct a Comprehensive Search: Before filing, perform a thorough search on the IP India portal across relevant classes to identify potentially conflicting marks. This helps in assessing the risk of objection.
• File a Strong Application: Ensure your application is filed correctly, with a clear description of goods/services. If your mark has a descriptive component, be prepared to argue its distinctiveness as part of a composite whole.
• Be Prepared for Examination: Understand that an examination report raising an objection is a possibility. It is a procedural step, not a final rejection. You will have an opportunity to present your case.
• 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

If you feel you are being misled by a service provider or have received an unfair objection:

• Scrutinize the Advice: Be cautious of providers who guarantee outcomes or use fear tactics, like quoting extremely high objection rates, to sell expensive packages. Ask for a detailed search report to back up their claims.
• Read the Examination Report: If the Registry raises an objection, carefully read the official examination report. It will clearly state the grounds for objection (Section 9 or 11) and cite the conflicting marks, if any.
• File a Meritorious Reply: Your reply to the examination report must directly address the examiner’s objections. You must argue how your mark is distinctive and/or not confusingly similar to the cited marks.
• 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 or objection process. This is a civil administrative procedure handled exclusively by the Controller General of Patents, Designs and Trade Marks (the Trade Marks Registry). Police involvement in trademark matters is limited to criminal enforcement actions, such as conducting raids and seizures in cases of counterfeiting and infringement, which is entirely separate from the registration process.

FAQs people normally have

• Why do most trademark applications get objected to?
  Objections are common because the Registry must strictly ensure that new marks are truly distinctive and do not conflict with existing ones. Common reasons include the mark being too descriptive (Section 9) or being similar to an existing mark (Section 11).
• Can I still register a mark that contains a common or descriptive word?
  Yes. A trademark is evaluated as a whole. If you combine a descriptive word (like “Vastra”) with a distinctive, arbitrary, or fanciful word (like “Aria”), the composite mark can be registered if the overall combination is unique.
• Is it a fact that I will need to file an objection reply?
  No, it is not a fact. It is a possibility. While many applications face objections, a well-researched and distinctive mark may be accepted without any objections.
• What happens after I file a reply to the objection?
  The examiner will review your reply. If they are satisfied, the mark will be advertised in the Trade Marks Journal. If they are not satisfied, a hearing will be scheduled where you or your lawyer can argue the case in person before a hearing officer.

What evidence is required?

To successfully overcome an objection, the following evidence is crucial in your reply:

• Affidavit of Use: A sworn statement detailing when you first started using the mark, the geographical area of use, and the sales and advertising figures associated with the brand. This proves that the mark has acquired distinctiveness through use.
• Supporting Documents: Copies of invoices, bills, marketing materials, advertisements, media mentions, and website screenshots that show the mark being used in commerce.
• Legal Arguments: A well-drafted reply that legally differentiates your mark from any cited conflicting marks, focusing on differences in appearance, sound, idea, and the class of consumers.

How long will the investigation take?

The “investigation” is the trademark examination and prosecution timeline, which can be lengthy:

• Initial Examination: The Trade Marks Registry typically takes 3 to 9 months to examine a new application and issue an examination report.
• Reply Period: If an objection is raised, you have 30 days from receiving the report to file a reply.
• Review of Reply: It can take another 6 to 12 months for the examiner to review your reply and decide on the next step.
• Hearing and Advertisement: If a hearing is required, it can add several more months to the process. If the application is accepted, it is advertised in the Journal for four months to allow for third-party opposition.
• Total Time: A straightforward registration can take 8-12 months. An application with objections can take anywhere from 1.5 to 3 years or more to achieve registration.

Advocate Sudhir Rao, Supreme Court of India