Trademark Hearing

Reasons for Trademark Hearing

• Unresolved Objections: If the written response to the objection does not satisfy the Registrar’s concerns, a hearing is scheduled.
• Complexity of the Case: For objections involving complex issues like similarity with existing trademarks, deceptiveness, or distinctiveness.
• Failure to Respond: If there is no timely response to objections, a hearing may be called before marking the application as “abandoned.”

Applicable Law and Regulations

The Trademarks Act, 1999 and Trademarks Rules, 2017 govern the process and conduct of trademark hearings. Rule 36 of the Trademarks Rules, 2017, covers hearings related to opposition and objections raised during the examination stage.

Steps to Prepare for a Trademark Hearing

• Step 1

  Review the Examination Report and Response

  Analyze the grounds of objection and review the previously submitted reply.

• Step 2

  Prepare Supporting Documents

  Collect evidence such as usage proof, sales records, advertisements, or market surveys to demonstrate distinctiveness or originality.

• Step 3

  Engage a Trademark Attorney

  If needed, appoint a legal representative experienced in handling trademark hearings.

• Step 4

  Attend the Hearing

  The applicant or attorney presents arguments, answers queries from the Registrar, and submits additional evidence as required.

• Step 5

  Await Decision

  The Registrar will make a decision based on the hearing outcome, which could result in approval, further objection, or mark rejection.

Format of a Trademark Hearing

• Location: Typically held in the Trademark Office where the application was filed. Some hearings may be conducted online.
• Duration: Varies depending on the complexity of the case, usually lasting from 15 minutes to an hour.
• Documentation: The applicant or representative submits required documents and presents evidence supporting the trademark’s registration.

Possible Outcomes of a Trademark Hearing

• Approval: The Registrar is convinced, and the application moves forward to the Trademark Journal for publication.
• Further Objections: Additional objections may be raised, requiring further clarification.
• Rejection: If the Registrar remains unconvinced, the application may be rejected, which can be appealed to the Intellectual Property Appellate Board (IPAB).

Timeline

• Notice of Hearing: Issued 2-3 weeks before the scheduled date.
• Hearing Decision: Typically provided within a month after the hearing.
• Publication or Further Action: If approved, the mark is published in the Trademark Journal within 2-3 months, inviting public opposition for four months before final registration.

Example of a Trademark Hearing Case

• Scenario: A company applies for the mark “HealthyFuel” for nutritional supplements. The Registrar raises an objection due to similarity with an existing trademark “FuelHealth” in the same industry.
• Hearing Approach: The applicant argues that “HealthyFuel” has different brand associations, markets, and consumer bases, and submits evidence of distinctive branding and logo design, emphasizing a lack of public confusion.

Consequences of Missing a Trademark Hearing

If an applicant fails to attend the scheduled hearing, the application may be marked as “abandoned,” resulting in loss of rights over the mark. The applicant may reapply but must start the entire registration process anew.