Responding to Trademark Objection: Alteration and Change
Modifying a Trademark to Overcome Registry Objections
Can the Trademark Name or Mark be Changed After Objection?
The Answer is Yes, Subject to Rules:
There is a legal provision for the alteration, change, or modification of a trademark *after* an objection or before registration. This is done to address any potential conflict or descriptive issue raised by the Examiner.
This process is governed by Section 59 of the Trade Marks Act, 1999, complemented by Rule 98 of the Trade Marks Rules, 2017.
Procedure and Documentation for Alteration
Filing for Change/Alteration:
- Application Form: The application for alteration or modification must be submitted by the proprietor using Form TM-M (formerly TM-38 for this specific purpose).
- New Version: Five copies of the changed, modified, or altered version of the trademark must be submitted along with the application.
- Documentation: The necessary documentation (PAN/Aadhaar of signatory, Signed Form-48, Digital Signature) is required, similar to other TM filings.
- Purpose: This process ensures that the modified mark is officially reviewed by the Registry, making it a viable solution to clear certain objections.
Simple & Transparent Pricing for Trademark Objection Hearing
Scale your features as your business grows. Find the plan that fits your needs today.
Basic Plan
- Drafting and filing of reply for objection raised by Trademark Examiner.
Standard Plan
- Drafting and filing of reply for objection raised by Trademark Examiner with fresh Form-48. For trademark applications filed by third-parties.
Premium Plan
- Drafting and filing of reply for objection raised by Trademark Examiner along with trademark rectification.
FAQ's on Hearing for TradeMark Objection
Your Questions Answered
What is the deadline for filing a response to a Trademark Examination Report?
The applicant must file a complete and substantive response to the Examination Report within one month from the date the report was issued. Failure to respond within this period may lead to the application being treated as abandoned.
When is an alteration or amendment to the original mark necessary?
Alteration is necessary when the Examiner suggests that a minor modification to the mark (e.g., changing the font, removing a descriptive element, or adding a disclaimer) would make it distinct and overcome objections under Section 9 (Absolute Grounds).
What is the procedure for formally requesting an alteration to the mark?
The request for a minor alteration must be included as part of the formal reply to the Examination Report. For significant changes, the applicant may need to file Form TM-M requesting the amendment of the existing mark.
What are the limitations on altering a Trademark application after filing?
The fundamental principle is that the alteration must not substantially change the identity of the original mark. Changes that alter the basic character of the mark or extend the scope of goods/services are generally not permitted and may require a new application.
Can the description of goods or services be altered or narrowed?
Yes. It is common and generally permissible to narrow the description of the goods or services in the application to focus the scope and avoid conflicts with existing marks (Section 11). This is done via a formal amendment request (Form TM-M).
When is a disclaimer a suitable response to an objection?
A disclaimer is suitable when a part of the mark is descriptive or generic (e.g., using "High Quality" as part of the brand name). The applicant can agree to disclaim the exclusive right to that descriptive part, thereby overcoming the Section 9 objection while retaining protection for the unique part.
What happens after the response, including any alterations, is filed?
After the response and alteration requests are submitted, the Examiner will review the submission. If satisfied, the application will be accepted and advertised in the Trademark Journal. If not satisfied, a Show Cause Hearing will be scheduled.
What if the objection is based on a similarity to a cited mark (Section 11)?
If the objection is based on similarity, the applicant must file evidence of use (Affidavit of Use) or try to obtain a No Objection Certificate (NOC) from the owner of the cited mark. Altering the mark to make it substantially distinct from the cited mark may also be proposed.
