Trademark Objection Filing

Response to trademark objections.

An examination report is the Registrar's statement of why a mark may not be registrable, and it starts a thirty-day clock. Objections under section 9 say the mark is descriptive or not distinctive; under section 11 they say it is too close to an earlier mark. Neither is a refusal — a large proportion of applications draw one — and the reply is what decides the application. What ends an application is not a strong objection; it is a missed window.

Who this is for

Objection response
Counter-statements
Hearing rep
Registration success

The process

What we actually do

1
We identify what the objection actually turns on
Section 9 and section 11 need entirely different replies. A descriptiveness objection is met with evidence that the mark has acquired distinctiveness through use; a similarity objection is met by distinguishing the marks, the goods, or the channels of trade. Answering the wrong one wastes the reply.
2
We assemble evidence of use where it is the answer
Dated invoices, advertising spend, packaging, social and press coverage, and turnover figures under the mark. A section 9 objection answered with argument alone rarely moves; the same objection answered with five years of invoices frequently does.
3
We distinguish the cited marks properly
For a section 11 citation, the reply addresses each cited mark specifically — differences in the mark itself, in the goods or services, in the class, and in the trade channels. A generic reply that treats six citations as one is what draws a hearing.
4
We file inside the thirty days
The reply goes on the Registry portal with the evidence attached. An application with no reply is treated as abandoned, and restoring it is considerably harder than replying was.
5
We attend the hearing if one is fixed
Where the reply does not resolve it, the Registrar fixes a hearing. Non-appearance is treated as abandonment, so a hearing notice is a date rather than an option.

Who this is for

Applicants who have received an examination report and have thirty days to reply
Applicants facing a section 9 descriptiveness objection, where evidence of use is the answer
Applicants facing a section 11 citation of an earlier similar mark
Applicants whose reply was filed and who are now called to a hearing
Anyone whose application has been marked abandoned and wants to know whether it can be restored

How long it takes

The reply must be filed within thirty days of the examination report. Registry processing after that runs to several months, and a hearing adds its own wait.

If you do nothing

The application is abandoned at the end of the thirty days. The fee is gone, the priority date is gone, and any competitor who filed later now sits ahead of you. Because objections are routine rather than exceptional, an applicant who treats the report as bad news and stops has usually abandoned an application that would have registered.

The law, in figures

Dates, thresholds and sections

Every figure below carries the provision it comes from, so it can be checked.
What	Figure	Source
Examination report	Issued where the Registrar raises an objection	Section 18(4) read with Rule 33, Trade Marks Rules 2017
Time to reply	30 days from receipt	Rule 33(1), Trade Marks Rules 2017
Absolute grounds	Descriptive, non-distinctive, generic or deceptive	Section 9, Trade Marks Act 1999
Relative grounds	Similarity to an earlier mark for similar goods or services	Section 11, Trade Marks Act 1999
Acquired distinctiveness	A section 9 objection may be overcome by evidence of distinctiveness acquired through use	Section 9(1), proviso
Consequence of no reply	The application is treated as abandoned	Rule 33(4), Trade Marks Rules 2017

What usually goes wrong

Missing the thirty-day window, which abandons the application outright
Replying to a section 9 objection with argument where evidence of use was needed
Treating several cited marks as one and replying generically
Not appearing at a fixed hearing, which is treated as abandonment
Assuming an objection means refusal and giving up on an application that was answerable

What non-compliance costs

Abandonment of the application, with the filing fee lost
Refusal, after which the same mark cannot simply be refiled against the same citation
Continued use of an unregistered mark leaves you with passing-off remedies only

These are statutory amounts, not our fees. What we charge depends on your situation and is quoted before any work starts.

Not to be confused with

These come up in the same conversation and are routinely treated as the same thing. They are not.

Opposition

An objection comes from the Registrar during examination. An opposition comes from a third party after the mark is advertised, within four months, and is a contested proceeding with evidence on both sides.

Refusal

An objection is an invitation to respond. Refusal follows only where the reply and any hearing fail to overcome it, and carries an appeal route of its own.

Terms you will come across

Trademark Objection: A trademark objection is the examiner's written refusal to accept an application as filed, and it must be answered within thirty days or the application is treated as abandoned.

Related services