After a trademark application is filed, the Trade Marks Registry examines it against the Trade Marks Act and existing marks on the register. An examination report may raise objections rather than accepting the mark directly.
The response should address the actual objection. A generic statement that the brand is unique is rarely enough if the report identifies a specific statutory ground or earlier mark.
1. Read each objection separately
An examination report may raise issues about distinctiveness, descriptiveness, prohibited matter or similarity with earlier marks. Identify the section and reasoning for each objection rather than combining them into one answer.
If multiple earlier marks are cited, review their status, goods/services and visual/phonetic features individually.
2. Compare the mark as a whole
Similarity analysis is not limited to identical spelling. Appearance, sound, idea, goods/services and the relevant consumer context may all matter.
For device marks, assess the word element, logo and overall commercial impression.
3. Evidence of use can be important
Where the response relies on acquired distinctiveness, prior use or market recognition, gather dated invoices, packaging, advertising, website records and other material capable of showing real use.
Do not submit unsupported turnover or use claims merely because they sound persuasive.
4. Keep the goods/services accurate
Overbroad specifications can create unnecessary conflict with earlier marks and may not reflect the applicant’s real business. Any proposed limitation or amendment should be considered strategically and within the procedural framework.
The class number alone does not define the scope; the specification wording matters.
5. A hearing may follow
If the written response does not resolve the objection, a hearing can be scheduled. The file should therefore be prepared with the possibility that the legal and factual position will need to be explained orally and supported by the record.
Track deadlines and Registry communications carefully.
Response file
Keep the prosecution record in one place.
- Application and representation of the mark.
- Examination report and cited mark details.
- Search results and status of relevant cited marks.
- Evidence of use/distinctiveness where relied upon.
- Filed response, acknowledgement and hearing communications.
Reference framework
Legal framework referred to in this article
- Trade Marks Act, 1999
- Trade Marks Rules, 2017
Primary materials
This article summarises the legal and regulatory framework relevant to the topic. Later amendments, factual differences and applicable directions may affect the position.