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Trademark Objection: Meaning, Reasons, and How to Respond

  • A trademark objection is a preliminary refusal made by the relevant trademark officer.
  • It is not a rejection but a chance to amend, correct, and justify your mark.
  • Your prompt response and the correct use of lawyers is the best defence against the cancellation or loss of rights in respect of a mark.
  • The work of professionals can assist in resubmitting your mark in compliance with local and international legislation.
  • Any business operating across global borders, or even in their own jurisdiction, must engage with trademark objections as part of the stages of securing brand protection.

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Introduction

What is a trademark objection?

Documents

Process

Conclusion

Introduction

In early 2023, a technology startup out of Berlin experienced a worrying situation. Their newly launched application, sillily coined from a mix of two popular technology terms, received an objection of trademark from the EUIPO (European Union Intellectual Property Office), stating that the mark was “too descriptive” of what the app does. 

The founders were irritated. Their logo, branding, and domain name were all active. Like most entrepreneurs, they assumed completing the application process was the last step of the process. Even if a trademark objection can be frustrating, it is simply a process (and usually not the end of the road).  

Knowing what a trademark objection means, the reason for it occurring, and the correct way to respond can be the difference between securing your intellectual property or losing it due to process errors.

Understanding of Trademark Objection in India

A trademark objection in India is a vital juncture within the trademark registration process. Objections may be raised by either the Trademark Examiner or in certain cases, a third party, objecting to the contemplated trademark and possibly preventing the registration of a trademark. 

When filing a trademark application, registration does not happen automatically. Each application will be examined by the Trademark Office to determine whether it meets the requirements set out in the Trade Marks Act, 1999, and whether there are any existing rights which have not been violated. In many cases, the examiner will issue an objection to one or more of the specific reasons that can be addressed before the mark can proceed to publication or registration. 

In some cases, the objection is entirely procedural in nature and does not represent an outright rejection of the mark. The objection represents an opportunity to respond with reasoning, clarify, or modify the application. Clearly, ignoring the objection or possibly mishandling the objection will only lead to an abandonment of the mark; a far more efficient process that delays or nullifying the objectives of protecting your brand.

What Is a Trademark Objection?

A trademark objection is a situation where a national or regional trademark office (e.g. USPTO, UKIPO, IP India) has an issue with an application during examination.

While an objection is not a rejection per se, it means the examiner believes that the application may contravene certain rules or is arguably not “distinctive enough” for protection. The applicant is invited to respond, clarify or amend the application.

In many cases, it is the case that a thoughtful and thorough reply expedites resolution, while, in the opposite case, an inappropriate or delayed reply leads to abandonment of the mark.

Trademark Objection

What Is a Trademark Objection Reply?

A trademark objection reply is a formal written response made by the applicant to respond to the issues raised by the Trademark Registrar when evaluating a trademark application. It is an important procedural step that the applicant takes in an attempt to clarify the distinctiveness, purpose, and legitimacy of the mark, and to explain why it should progress to registration. In a circumstance where the Trademark Office has issued an Examination Report raising objections under the Trade Marks Act, 1999, the applicant is usually required to reply to it within 30 days of receipt.

This reply is no small matter, it is the applicant’s opportunity to defend their intellectual property and confirm that their brand identity is recognized by law and protected.

Types of Trademark Objections

Trademark opposition can arise during registration when objections are made based, broadly, on (a) procedural issues; or (b) substantive issues. 

These objections arise on a number of different factors: 

(i) from an administrative error made on the application; 

(ii) from existing or non-complying statutory rights under the Trade Marks Act, 1999. 

Understanding the objection types is critical to filing accurate applications and developing a response if an issue arises.

1.Procedural Objections

Procedural objections are administrative in nature and typically arise from some form of clerical or documented application error. Procedural objections do not ordinarily raise an objection to a trademark’s originality, but rather whether the application satisfies the procedural requirements. 

Examples of common procedural objections:

  • Incorrect form of trademark selection
  • Misspelt or incomplete applicant’s name
  • Failure to file Power of Attorney (Form TM-48)
  • Incorrect or incomplete address of the applicant
  • Incorrect class goods/services
  • Incomprehensible or not completely defined description
  • Missing signature or verbatim documentation.

2. Substantive Objections

Substantive objections relate directly to the registrability of the trademark itself. These objections arise when the examiner believes the trade mark does not meet the requirements of trademark law to be distinctive or would conflict with another trademark. 

Substantive objections are based on absolute grounds (Section 9) and relative grounds (Section 11) of the Trade Marks Act, 1999.

Substantive objections typically include:

  • Lack of distinctiveness or uniqueness
  • Descriptive or generic terms, simply describing the goods/services 
  • Deceptive, misleading or offensive words or images
  • Identical or deceptively similar marks that are already registered or pending
  • Use of prohibited emblems or names under Indian law

Responding to substantive objections is highly strategic and incorporates legal reasoning, evidence of distinctiveness, and sometimes cases where the trade mark examiner has accepted similar trade marks.

Detailed Examples of Common Trademark Objections

Below is a more comprehensive overview of the various types of trademark objections, their descriptions, and practical examples.

Type of Objection

Description

Example

Incorrect Trademark Form

Using an inappropriate filing form for the trademark type or class

Filing a single-class trademark using a multi-class form (Form TM-M instead of TM-A)

Incorrect Applicant Name

Errors or inconsistencies in the applicant’s name or company details

Applying under “ABC Pvt Ltd” while documents mention “ABC Private Limited”

Failure to File TM-48

Not submitting Power of Attorney (Form TM-48) when an agent or attorney files the application

Trademark attorney forgets to attach TM-48 as proof of authorisation

Incomplete Address

Missing or incomplete business or applicant address

Mentioning “ABC Street” without specifying the city or pin code

Wrong Classification

Filing the mark under the wrong class of goods or services

Registering software under Class 27 (Carpets, Rugs, Mats) instead of Class 42 (Technology)

Misses Unique Character

Mark lacks originality or distinctiveness

Attempting to register “Fresh Fruits” for a fruit-selling business

Unclear Specifications

Ambiguous description of goods/services in the application

Using “consumer goods” instead of clearly listing “shampoos and soaps”

Deceptively Similar or Identical Marks

The applied mark resembles an existing or pending one

Applying for “Coca-Kola” when “Coca-Cola” already exists

Offensive or Misleading Terms

Marks containing offensive, deceptive, or prohibited words

Using “Swiss Chocolates” for Indian products or vulgar phrases in a brand name

Common Reasons for Trademark Objection

Each jurisdiction frames its objections differently, but the causes typically fall into three general categories.

  1. Descriptiveness or Lack of Distinctiveness When the applied for mark immediately describes the goods/services (e.g., “Fresh Bread” for a bakery), the examiner may object under absolute grounds. 

e.g., The term “EcoClean” was objected to in multiple countries as generic for cleaning products. 

  1. Similarity to Existing Marks When your mark is similar to a registered or pending mark, i.e., phonetic, visual or conceptual similarity, it can be opposed. A global skincare brand had one objection in India as similar phonetically to a local herbal label. 
  2. Times when there is Incorrect Classification &/or documentation errors Classification of goods/services or lack of documentation e.g., Power of Attorney (POA).

    Make sure your classification of the Nice Classification fits with your business activity prior to filing.

Benefits of Filing a Trademark Objection Reply

  • Brand Protection: Protects your trademark from abuse or copying. 
  • Avoiding Refusal: Protects your application from being denied or abandoned. 
  • Legal Strength: Establishes the validity and enforceability of your mark. 
  • Increases Approval Chances: Improves the chances of successful registration. 
  • Compliance: Confirms your trademark is compliant with substantive and procedural regulations. 
  • Market Credibility: Establishes confidence and professionalism in your brand. 
  • Cost and Time Efficiency: Eliminates the cost and delay of refiling. 
  • Good Faith Representation: Indicates due diligence and bona fide intention before regulators. 
  • Exclusive Rights: Preserves your ownership and control over the mark. 
  • IP Portfolio Development: Builds the strength of your overall intellectual property.

When to Submit a Trademark Objection Reply

Within thirty days of receipt of the Examination Report of the trademark application received from the Trademark Registry, the applicant must be prepared to make a trademark objection reply. The Trade Marks Act, 1999, has imposed a strict timeline in which any delay in responding to the trademark objection reply may lead to abandonment or refusal of the application.  

The trademark objection reply is the mechanism by which the applicant can respond formally to the objections made by the Trademark Examiner in relation to the pending trademark application. A trademark objection reply is the occasion for the applicant to explain and justify why evidence demonstrates that the mark meets all requirements for registration. 

If the Registrar determines that the written response is insufficient or if the trademark examiner’s objections are still not resolved, the applicant is invited to a show-cause hearing. At the show-cause hearing, the applicant and/or their agent may give oral arguments and submit documents and other evidence in support of their position. The Registrar will make a final determination following the hearing, and that determination will decide if the mark will proceed for publication or will be refused.

Who Can File a Reply for Trademark Objection in India

According to the Trade Marks Act of 1999, in India, either the applicant or an authorized representative of the applicant can file a response to a trademark objection. In other words, anybody with a legitimate interest in defending the application who has filed or authorized filing of the trademark application may file a reply.

 The following parties qualify to the reply to a trademark objection to filed with the Indian Trademark Office: The Applicant or Trademark Owner: 

The original applicant or owner of the trademark application ultimately has the responsibility to respond to the trademark objection.

  • Licensed Trademark Agent or Attorney: If the trademark application was filed by an agent or a licensed attorney, the licensee can file the reply to the objection on behalf of the applicant by completing the form TM-48 (Power of Attorney).
  • Independent Proprietors or Business Corporations: Any entity such as a corporation, LLP, partnership firm, sole proprietorship or trust that filed a trademark application may submit the reply to the trademark objection. 
  • Prior Users of the Mark: A person who has been using the mark in good faith — even if the mark is not registered — may file a response to a trademark objection to defend their right to use the mark and registration of the mark.

Documents Required for Filing a Trademark Objection Reply

Responding to a trademark objection requires precise evidence and documentation to support your assertion of trademark ownership. The following documents will assist in substantiating your application and will assist in bolstering your response in front of the Trademark Registrar: 

Mandatory Documents

  • Authorization (Form TM-48): A properly filled and signed authorization form for your attorney or agent to act in your lieu.
  • Trademark Examination Report / Application Number: A copy of the official report citing the objections the Registrar has raised. 
  • Proof of Identity: The applicants or authorized signatories Aadhar Card, Passport, PAN, or Voter ID.
  • Proof of Address: Recent utility bills, bank statement, or lease agreements showing an address for the business. 

Supporting Documents

  • Invoices & Bills: Evidence of commercial use of the mark on products or in services.
  • Affidavit of Usage: A notarized affidavit attesting to the length and extent of usage of the mark.
  • Media advertisements: Copy or clippings from newspapers or digital ads, or promotions containing the mark.
  • Proof of Online Presence: Screenshots of company websites, social media handles, or e-com listings with trademark prominently shown.
  • Business Documents: Business cards, letterheads, packaging, and or photographs of products with the mark clearly shown.
  • Government Registrations: MSME, FSSAI, or GST certificates demonstrating legitimate business registrations.

Trademark Registration Status ‘Objected’: What to Do

If your trademark registration status indicates ‘Objected’, it means that the Trademark Examiner has raised objections in the examination report. Here’s what you need to do next:

  • Consult a Trademark Expert: Hire a qualified IPR consultant or trademark attorney who can assist you with the exact reason for objection.
  • Review the Examination Report: Obtain a copy of the examination report and review it carefully to identify the clauses and grounds of the objections.
  • Draft a Clear Reply: Within 30 days of receiving the examination report, prepare a clear and well-evidenced trademark objection reply.
  • Focus on Distinctiveness: Include evidence and arguments that support that your mark is distinctive, not deceptive, and entitled to registration.
  • Submit Reply in Time: File your reply online through the IP India portal before the completion of the 30 days either directly or through a trademark attorney.
  • Prepare for Hearing: In case the objections are not waived off, you are invited to attend the scheduled show cause hearing at the Trademark Office. 

Importantly: If you don’t respond or file a reply to the objection within the allowed time you can lose your rights to the proposed mark because the application will be treated as abandoned.

Process for Responding to an Objection in Trademark Registration

A timely and well-drafted trademark objection reply can make the difference between approval and rejection. Below is a step-by-step process followed in India:

1. Review the Trademark Objection Notice

Carefully examine the grounds of objection mentioned in the Examination Report. Discuss each point with your trademark attorney to ensure no detail is overlooked.

2. Understand the Deadline

The reply must be filed within 30 days from the date of issue of the report. Late submissions are not accepted under Indian trademark law.

3. Gather Supporting Evidence

Collect proof of prior use, brand recognition, sales records, consumer testimonials, and market presence. These documents help establish distinctiveness and commercial use.

4. Draft and File the Reply

Prepare a detailed, legally sound reply addressing every objection raised. Include arguments on the uniqueness of the mark and its non-conflict with existing trademarks. The reply is then filed online through the official IP India website.

5. Monitor Application Status

After filing, keep track of updates via the IP India portal. Regular monitoring helps you stay informed about hearing notices or examiner feedback.

6. Attend Hearing or Negotiations

If the examiner requires further clarification, a show-cause hearing is scheduled. The applicant or attorney must present oral arguments to support the registration.

7. Outcome Publication

If the examiner accepts your reply, the mark is published in the Trademark Journal for public opposition. If rejected, a refusal order with reasons is issued.

8. File Review Petition (if needed)

In case of rejection, the applicant may file a review petition within 30 days from receipt of the refusal order, explaining grounds for reconsideration.

9. Final Registration

Once accepted and published, if no opposition is filed within four months, the trademark proceeds to registration. A registration certificate is then issued, granting exclusive rights to the owner.

Why Choose Diligence Certifications?

  • Expert Guidance: Skilled professionals with deep experience in trademark and compliance services.
  • End-to-End Assistance: Complete support from application filing to final registration.
  • Proven Success Rate: Strong track record in resolving trademark objections efficiently.
  • Transparent Process: Honest communication and no hidden fees at any stage.
  • Quick Turnaround: Fast processing and proactive follow-ups with authorities.
  • Tailored Solutions: Customised services designed for startups, MSMEs, and established brands.
  • Trusted by Clients: Preferred by businesses across industries for reliability and results.
  • Affordable Pricing: Competitive fees ensuring quality service within budget.

Conclusion: Trademark Objection as a Growth Milestone

Every brand that grows globally encounters a trademark objection at some stage. It’s not a setback — it’s a checkpoint ensuring that your brand identity is legally sound.

Handled strategically, an objection can refine your mark, reinforce its distinctiveness, and signal to the market that your brand stands for originality and diligence.

Whether you’re a startup protecting your first logo or a multinational filing across 50 countries, professional guidance can turn an objection into an opportunity for stronger global recognition.

Need expert help with a trademark objection?
 Consult our global IP specialists to prepare, file, and defend your trademark — from examination to enforcement.

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Frequently Asked Questions

 A trademark objection is a concern or query raised by the Trademark Examiner during the registration process, usually due to conflict, similarity, or procedural errors.

 A trademark objection can be raised by the Trademark Registrar during examination or by a third party after publication in the Trademark Journal.

It usually occurs at the initial examination stage after filing the trademark application, or during the journal publication stage.

 Common reasons include similarity to an existing mark, lack of distinctiveness, incorrect classification, misleading words, or procedural errors in the application.

 You must file a trademark objection reply within 30 days, addressing all issues raised and attaching supporting documents or evidence.

 Ignoring or missing the deadline can lead to abandonment or rejection of your trademark application.

The applicant, owner, or an authorised trademark attorney or agent can file the reply under the Trade Marks Act, 1999.

 The reply must be filed within 30 days from the date of receipt of the Examination Report.

While not always avoidable, ensuring correct classification, distinct branding, and compliance during filing can significantly reduce the chances of objection.

Documents include Form TM-48, ID and address proof, usage affidavit, invoices, advertisements, online presence proof, and business registration certificates.

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