Trademark hearing

A trademark hearing is a formal proceeding conducted by the Trademarks Registry to address concerns, objections, or queries raised during the examination of a trademark application. It offers a chance for the applicant to present arguments, clarifications, and evidence to address objections and advance the application in the registration process.

A trademark hearing may be necessitated by various objections, and three common categories include objections under Section 9, Section 11, and formalities:

Section 9 Objections: Section 9 objections typically arise when the proposed trademark lacks distinctiveness, is descriptive of the goods or services, or consists of common terms.

Section 11 Objections: Section 11 objections occur when the proposed trademark is similar or identical to existing trademarks, potentially leading to confusion among consumers.

Formalities Objections: Formalities objections pertain to technical or procedural deficiencies in the trademark application, such as incomplete documentation or inaccuracies in the application form.

Seeking a Trademark Hearing

Trademark hearings usually take place following the applicant’s receipt of an examination report detailing objections raised by the trademark examiner.

When requesting a hearing, the applicant needs to submit a suitable response to the examination report. You may receive Form TM-M (if applicable) or another designated form that outlines the reasons for contesting objections.

Necessary Documents for a Trademark Hearing

• Response to Examination Report: A detailed response addressing each objection raised in the examination report is essential. Clearly articulate arguments and provide evidence to support the registrability of the trademark.
• Evidence of Use: If the objection relates to distinctiveness or prior use, submitting evidence of the trademark’s usage in commerce can strengthen the applicant’s case. Invoices, product labels, or any relevant documentation should be included.
• Legal Arguments: Presenting legal arguments and citing relevant case law to support the distinctiveness and registrability of the trademark can be persuasive. A qualified trademark attorney can assist in formulating strong legal arguments.
• Amendments to the Application: If necessary, propose amendments to the application, such as modifying the description of goods or services, altering the visual elements of the trademark, or providing additional disclaimers. 

Arguments During the Trademark Hearing

• Distinctiveness: Emphasize the unique and distinctive aspects of the trademark that set it apart from existing marks in the relevant industry.
• Non-confusion: Demonstrate that the proposed trademark is unlikely to cause confusion with existing trademarks, highlighting differences in appearance, meaning, or overall impression.
• Evidence of Use: If applicable, showcase evidence proving the actual use of the trademark in commerce, establishing its distinctiveness and recognition among consumers.
• Amendments: Justify any proposed amendments to the application, explaining how these amendments address objections raised during the examination.
• Compliance with Legal Requirements: Ensure that the trademark complies with all legal requirements, including those related to distinctiveness, non-descriptiveness, and non-generic characteristics.

Following the Trademark Hearing

After the hearing, a decision will be issued by the Trademarks Registry considering the arguments, evidence, and amendments presented. If all concerns are resolved, the application can move forward with the registration process. If not, additional hearing dates are allotted to the applicants.

How can we help you?

At Intellect Vidhya Solutions, we understand the importance of trademark hearings and are ready to offer complete support throughout the entire process. Our skilled legal team is dedicated to assisting you through every stage, guaranteeing a comprehensive review and well-thought-out reaction to the objections outlined in the examination report. We carefully gather all required documents, such as evidence of use, legal arguments, and proposed amendments, to create a thorough and well-structured submission on your behalf.

Our trademark attorneys bring a wealth of experience to the table, providing expert advice and professional representation during the hearing. We make sure to keep you well-informed about the progress of your case and provide timely updates on any developments, prioritising transparent and efficient communication. If changes are needed for the application, we will assist you in navigating the process to make sure that the proposed modifications meet legal standards and adequately handle any objections.