Introduction

Trademark registration is an essential process for companies wishing to safeguard their brand identity. Yet the process of trademark application to successful trademark registration quite frequently has a critical phase — the trademark hearing. This phase ensures that your mark complies with all legal requirements and overturns any trademark objection filed by the examiner. With the recent revisions and technological innovations under the Trade Marks Act, 1999 and Trademark Rules, 2017 (amended in 2021), the hearing process has become more transparent and efficient.

Lawfinity, India's go-to legal advisor for trademark registration, tells you everything you should know about trademark hearing, trademark objection, and how expert help can be a game-changer.

WHEN HEARING IS NEEDED

At the time of trademark registration, after a trademark application is scrutinized by the Trade Marks Registry, the Examiner can issue an Examination Report if there are objections. These objections may be grounds of similarity with an existing mark, lack of distinctive character, or incorrect classification. If the Examiner is dissatisfied with your written response, a trademark hearing is fixed to give you a fair chance to justify your application.

A hearing of trademark is normally necessary when:

Your response to a trademark objection was deemed inadequate or ambiguous.
The mark is similar to an already pending or registered trademark.
The distinctiveness or descriptiveness of the mark is in many ways doubtful.
The application includes several classes or non-standard goods/services.
The Registrar requires oral clarifications prior to authorizing trademark registration.

Since 2021, the Controller General of Patents, Designs and Trade Marks (CGPDTM) has introduced video-conference hearing for trademarks, which makes the process cost-effective and convenient. With this change, applicants or their attorneys can now participate in hearings remotely without going to the regional registry office — a giant leap for India's digital trademark registration.

COMMON ISSUES DURING TRADEMARK HEARING

Even with a valid application for trademark registration, there are potential problems that can occur during a hearing on a trademark. Knowing these usual problems can assist applicants in making robust submissions.

1. Similarity with Current Marks

If your applied mark is similar to an already existing one in spelling, sound, or visual representation, the mark can result in a trademark objection. You need to prove that your brand has acquired distinctiveness or functions in a different class of goods/services.

2. Descriptive or Generic Marks

Marks characterizing the nature, quality, or purpose of the goods/services tend to be objected to in trademark. Terms such as "Fresh Milk" or "Best Tech" can hardly be straightforwardly registered as trademarks.

3. Inaccurate Classification or Specification

Inaccurate classification is a common reason for trademark objection. A hearing for the trademark provides you with a chance to rectify such discrepancies and explain the right classification.

4. Failure to File Evidence of Use

In case you have claimed earlier use in your trademark application, proof such as invoices, packaging, adverts, or ownership of domain names should be filed. Lack of these documents may result in rejection during hearing for the trademark.

5. Not Authorising an Agent

In case you are filing through agents or lawyers, a Power of Attorney (Form TM-48) should be filed prior to the trademark hearing. Lack of authorisation may cause delays.

To avoid these issues, applicants must respond promptly to every trademark objection, gather strong evidence, and ensure all documentation aligns with the current trademark registration guidelines.

REPRESENTATION PROCESS DURING TRADEMARK HEARING

The trademark hearing procedure is formal but manageable if handled professionally. Below is a step-by-step guide to understanding how the representation process works in India.

Step 1 – Hearing Notice

Upon making an objection reply filing, the applicant gets a formal notice either by email or by the IP India portal fixing the date and time of hearing of the trademark.

Step 2 – Preparation

Applicants must go through the Examination Report, correspondences, and comparable marks in the register. Proper preparation guarantees a persuasive case before the Hearing Officer.

Step 3 – Submission of Evidence

Pertinent documents like brand advertisements, sales invoices, website proofs, or business certificates must be gathered. These substantiate the originality and uniqueness needed for trademark registration.

Step 4 – Appearance and Arguments

At the trademark hearing, either the applicant or their legal representative must appear in person or online. Legal representatives from companies like Lawfinity are authorized to present the case professionally, quoting precedents and clarifications to overcome trademark objection.

Step 5 – Registrar's Decision

Upon reviewing submissions and documents, the Registrar accepts or rejects the mark or requests further amendments. If approved, the mark goes for advertisement in the Trademark Journal, resulting in final trademark registration.

The reforms introduced for online hearings in 2021 now enable e-submission of documents on Form TM-M, thus making the representation process for trademark registration fully digital.

Lawfinity's Expert Trademark Hearing Support

Lawfinity provides end-to-end assistance during your trademark registration, trademark objection, and trademark hearing process. Our legal professionals, lawyers, and trademark agents guarantee error-free application and compliance with current amendments.

How Lawfinity Streamlines the Process

Trademark Search & Filing: Determining possible conflicts prior to trademark registration.
Objection Reply Drafting: Effective replies supported by judicial precedents.
Representation at Hearing: Professional legal appearance for all trademark hearings.
Follow-ups & Documentation: Prompt coordination with the Trade Marks Registry.
Post-Hearing Compliance: Facilitating the mark smooth sailing towards trademark registration and publication.

By using Lawfinity, you have a trusted ally who manages your trademark hearing professionally and keeps your brand's protection on the legally correct path.