Once an application is filed and the formalities are in order, the Registry examines it. What follows is the stretch where most applications either clear the path to registration or run into trouble.
The sequence is: examination report, reply, hearing if needed, then advertisement.
The examination report
The trademark office examines the application and either raises no objection or issues an examination report. Objections fall into two kinds.
Procedural objections
Errors and omissions in the filing itself. A missing Power of Attorney, goods or services that do not fall within the class applied for, defects in the specification.
These are usually straightforward to cure.
Substantive objections
Objections on the merits, raised under Section 9 (absolute grounds) or Section 11 (relative grounds).
Absolute grounds concern the mark itself: it is descriptive, devoid of distinctive character, or otherwise excluded. Relative grounds concern conflict with earlier marks. Both are covered in marks that cannot be registered.
Substantive objections are where the real work is.
Replying to the examination report
A reply must be filed within one month of receipt of the examination report.
This is a short window and it is not generous in practice. Missing it puts the application at risk.
What goes into a good reply depends on the objection. For a Section 9 objection based on descriptiveness, the argument usually runs on distinctiveness, either inherent or acquired through use. For a Section 11 citation, the argument typically addresses the differences between the marks, the differences in goods or services, or the status of the cited mark, which may be dead or vulnerable to rectification.
Evidence matters. Assertions about use without documents behind them rarely move an examiner.
Show cause hearing
Where objections were raised, a reply was filed, and the Registrar remains unsatisfied, a hearing is appointed.
A hearing notice directs the proprietor or their agent to attend and show cause why the mark should not be refused. The burden at the hearing is on the applicant to persuade the Registrar to allow the mark.
The most common route to persuading on a distinctiveness objection is evidence of use in India sufficient to establish that the mark has acquired distinctiveness. Sales figures, advertising spend, duration and continuity of use, invoices, packaging, media coverage.
If the Registrar is convinced, the mark is ordered to be advertised. If not, it is refused.
Non-appearance at a hearing is generally fatal. Where an adjournment is genuinely needed, it must be requested properly and in time.
Advertisement in the Journal
A mark reaches advertisement by one of three routes:
- Directly from examination, where the Registrar is satisfied at the outset that no valid objection arises. This most often happens with coined words that have no similar marks on the Register.
- After a successful examination reply, where the Registrar accepts the arguments without a hearing.
- After a hearing, where the applicant persuades the Registrar.
The mark is then advertised in the Trade Marks Journal, which is published class-wise every Monday.
AAA and ABA
Two status entries cause regular confusion.
Advertised as Accepted (AAA) means the Registrar accepted the application and then advertised it.
Advertised Before Acceptance (ABA) means the mark was advertised without formal acceptance, typically where the Registrar wants to see whether opposition emerges before deciding. It is a weaker position than AAA, and it signals that the Registry retains reservations.
Either way, advertisement starts the clock on the four-month opposition window.
What happens next
If nobody opposes within four months, the mark proceeds to registration. If an opposition is filed, the matter moves into opposition proceedings, which is a considerably longer road.
Frequently asked questions
How long is the deadline to reply to an examination report? One month from receipt. It is short, and the Registry has moved to email service, which makes it important that your recorded address for service is current.
What happens if I miss the reply deadline? The application is at risk of being treated as abandoned. There are routes to seek revival in some circumstances, but they are uncertain and expensive compared with replying on time.
Can I file evidence of use with the examination reply? Yes, and where distinctiveness is in issue you generally should. Arguments about acquired distinctiveness without supporting evidence rarely succeed.
Is a hearing always required? No. Many applications proceed to advertisement on the strength of the written reply alone. A hearing is appointed only where the Registrar remains unsatisfied.
What is the difference between AAA and ABA? Advertised as Accepted means the mark was accepted then advertised. Advertised Before Acceptance means it was advertised without formal acceptance, usually because the Registrar wants to see if opposition emerges first.
How long does the whole process take? In a straightforward matter, roughly ten to twelve months to registration. Backlogs at the Registry can extend this considerably, and an opposition adds years rather than months.
Useful official resources
- Trade Marks Journal
- IP India public search — to check application status
- IP India e-filing portal
- Trade Marks Act, 1999 — Sections 9 and 11
Received an examination report and unsure how strong the objection is? Talk to us. The reply window is one month, so it is worth moving quickly.