Trademark Objection Reply

After a trademark application is filed, the Registry examines it and issues an examination report. If the examiner has concerns, the report raises objections under section 9, section 11, or both, and you have thirty days to reply.

Section 9 objections are absolute grounds — the mark is descriptive, generic, laudatory or otherwise not capable of distinguishing your goods. Section 11 objections are relative grounds — the mark is identical or deceptively similar to an earlier mark already on the register or pending.

The two require completely different answers. A section 9 objection is met with evidence of distinctiveness or an argument on the mark’s character. A section 11 objection is met by distinguishing the cited marks — on the mark itself, on the goods, on the trade channels, or by consent from the cited proprietor. Replies that ignore this distinction fail.

Acquired distinctiveness beats a section 9 objection

The proviso to section 9 allows registration of an otherwise descriptive mark where it has in fact acquired distinctiveness through use. The evidence has to be specific — dated invoices, advertising spend, turnover attributable to the mark, geographic spread. Generic assertions that the brand is well known achieve nothing. A well-built affidavit is the single most effective response available.

For section 11, look at the cited mark’s file

Cited marks are often abandoned, removed for non-renewal, opposed, or registered for goods that do not actually overlap with yours. Checking the status of every cited mark before drafting frequently reduces a long list of citations to one or two live problems.

Consent letters are underused

Where a cited proprietor operates in a genuinely different space, they will often sign a letter of consent or a short coexistence agreement. This is faster and cheaper than arguing, and the Registry gives such letters real weight.

Narrowing the specification

Where the conflict arises from an overly broad specification, voluntarily limiting the goods or services to what you actually sell can remove the objection entirely. You lose protection you were never going to use.

Non-use rectification as leverage

A cited mark that has not been used for five years and three months from the date of entry on the register is vulnerable to rectification. Where the citation is blocking a valuable application, this is a legitimate route — slower, but decisive.

Examination reports, status and journals are published by the Office of the Controller General of Patents, Designs and Trade Marks.

If the reply satisfies the examiner, the mark is advertised in the Trade Marks Journal. That opens a four-month window in which any third party may oppose. Clearing examination is not the end of the process.

If the reply does not satisfy the examiner, a show-cause hearing is fixed. Hearings are where a meaningful proportion of applications are saved, and non-appearance generally results in refusal.

You can continue using the ™ symbol throughout. Only once the mark is registered may you use ®, and using it before registration is itself an offence.