Trademark Objection Reply

A trademark examination objection — called a examination report — is issued by the Trade Marks Registry when the examiner finds the applied mark problematic under one or more provisions of the Trade Marks Act. The most common objections are under Section 9 (absolute grounds — the mark is descriptive, generic, lacks distinctiveness, or consists exclusively of geographical indications or common trade terms) and Section 11 (relative grounds — the mark is identical or deceptively similar to an earlier mark on the Register). Receiving an examination report does not mean the application is rejected — it is an official objection that the applicant has an opportunity to overcome through a well-reasoned written reply supported by evidence. Most examination objections are successfully overcome with a properly drafted reply.

Understanding Section 9: Absolute Grounds for Refusal

Section 9 objections arise when the examiner determines that the mark lacks distinctive character, is descriptive of the goods or services, consists exclusively of terms that are customary in the trade, or is of such a nature as to deceive the public or cause confusion. The key test is whether the average consumer would perceive the mark as indicating the trade origin of the goods or services. A mark like "Quick Delivery" for a logistics company would be descriptive and face a Section 9 objection. To overcome this, we submit evidence of use — sales data, advertising expenditure, market surveys — showing that the mark has acquired distinctiveness through use over time, or we argue the narrowness of the goods description in the application relative to the breadth of the descriptive term.

Understanding Section 11: Relative Grounds for Refusal

Section 11 objections arise when the examiner finds an earlier mark on the Register that is identical or similar to the applied mark, covering the same or similar goods or services. The key question is whether there is a likelihood of confusion among the relevant public. To overcome a Section 11 objection, we can argue distinctions in the goods or services description, differences in the visual and phonetic appearance of the marks, the absence of actual confusion in the marketplace, or submit a letter of consent from the earlier mark owner. In cases where the marks are genuinely similar and the goods identical, the better strategy may be to narrow the goods description in the application or redesign the mark.

The Trademark Hearing: What Happens After the Reply

After we file the reply to the examination report (Form TM-O), the Registrar reviews the reply and the evidence. If satisfied, the mark proceeds to publication in the Trade Marks Journal. If not satisfied, the Registrar issues a show cause hearing notice requiring the applicant or their attorney to appear in person or through video conference to argue the case orally. FinTax24's IP attorneys attend all hearings, presenting oral submissions that reinforce the written reply. After the hearing, the Registrar either accepts the mark for publication or issues a final refusal order. In case of refusal, we advise on the appeal options — typically an appeal to the Intellectual Property Appellate Board (IPAB), which has succeeded the older IPAB structure under the Tribunals Reforms Act 2021.