Trademark Hearing

Overview

Trademark Hearing (during the trademark registration) may come at two occasions. Generally speaking; after the examination report is issued in case of Trademark Objection, trademark applicant is asked to submit REPLY TO EXAMINATION REPORT within a month or request for Trademark Hearing directly. Even after reply to objection, if Trademark Registry is not satisfied, they give the applicant an option of Ready for Show Cause Hearing. In another case, Trademark Hearing is caused when there is an Opponent of your Trademark Application vide TM-O after Accepted & Advertised status/ Advertised before Accepted where you must first submit a Counter Statement and then proceed for the hearing to safeguard your TM from being refused.

What is Show Cause Hearing

Show Cause Hearings are held when a trademark application is objected to and a REPLY TO EXAMINATION REPORT is submitted to the Trademark Examiner, and the Trademark Examiner is still unsatisfied with the submissions. The applicant has the option of attending the trademark hearing in person or through a Trademark Agent/Attorney. During the TM Hearing, if objections are waived off on merit, the trademark application is published in the TM Journal.

Reason for Trademark Hearings

When a trademark application is filed with the Registrar of Trademarks, it goes through various stages of trademark registration status. The Trademark Examiner examines the trademark application at the initial stage, and if he finds that the application is incorrect or similar to an existing trademark or lacks distinctiveness and is not valid as per various grounds listed in the Trademarks Act, then he may raise objection against registration of such trademark. If the Examiner raises any objection, the applicant must file an objection reply and prove how his mark qualifies for a valid registration. If the Trademark examiner is satisfied with the applicant's reply, he may accept the trademark, publish it in the Trademark Journal, and proceed with registration. If TM Department is not satisfied with the applicant's reply to the Examination Report, he must issue the Trademark Hearing Notice to the applicant for a Trademark Hearing.

Is Trademark Hering Mandatory Under TM Objection

Once the applicant has received the Examination Report which contains trademark objection under Section 9 or 11, you are required to submit REPLY TO EXAMINATION REPORT or request for a TM Hearing. On the basis of your response to objection, the Registrar will review the reply to an objection and read all contentions submitted within 30 days of the issuance of the examination report. At the Registrar's discretion, the demands to accept and protect the reply filed must be accepted. If the reply filled by the trademark is not met, the condition of the trademark will be updated to "Ready for show cause hearing" with an alert. It becomes mandatory to attend Trademark Hearing in the absence of which the mark is changed to Abandoned.

How to Know The Trademark hearing Date and Officer Name

After the status of Ready for show cause hearing is updated as an alert, within a few months, the Trademark Officer name including the Date of Hearing is updated on the Trademark Portal. A proper notice for hearing is also uploaded on the TM Status URL of the IP India Website. If the hearing has to be conducted in the virtual mode, the link to the attend the hearing is provided in 2-3 days before the trademark hearing. Further, the name of the hearing officer involved will be listed. To guarantee that your brand name doesn't get abandoned, you need to track online your trademark status and must attend the Trademark Hearing.

Documents Required for Trademark Hearing

Trademark Application Number
Notice of Trademark Hearing (if available)
Applicant's KYC and supporting documents
Letter of Authorization/Power of Attorney
Authorization Letter to attend trademark hearing
Usage Affidavit to prove the mark existence and presence
Additional submissions - Any goodwill gained through trademark usage or relevant documentary evidence supporting the case must be submitted
Any other documents depending on the merit of the TM to strengthen our case

Legal Procedures of Trademark Hearing

Show Cause Hearing Notice

When the hearing date is set, the Trademark Office will send a show-cause notice informing the applicant of the date, time, and location of the hearing and requesting that the applicant appear in person or through an authorised representative.

Power of Attorney or Authorization Letter

The proprietor/applicant of the trademark must provide our representative with an authorization letter or power of attorney, authorising the Agent or Trademark Attorney to appear on his behalf before the Trademark Hearing Officer.

Preparation for the Trademark Hearing

Our team will review the application and prepare the necessary contentions/ arguments to be given to the Hearing Officer for trademark registration.

Hearing before the Trademark Examiner

To have the trademark registered, our TM Agent/ Attorney shall attend the scheduled hearing before the Trademark Examiner and provide valid justification as to why the trademark application should be allowed to be published in the TM Journal.

Trademark Registrar's Final Decision

Following the hearing and submission of required evidence and documents, the Trademark Examiner has the discretion to accept or refuse the trademark application. The decision can be made on the date of the hearing, or the Registrar can postpone it for a few days.

Features & Benefits of Trademark Hearing

To prevent Trademark from being refused or abandoned

If the applicant has responded to the examination report by filing a trademark objection reply and the trademark examiner is not satisfied with the reply, the applicant must attend or cause a TM Agent/ Attorney to attend the hearing to provide additional justification, or the application will be marked as Abandoned by the Examiner. After the trademark hearing, the trademark application may be refused if the Hearing Officer is not satisfied with the submission.

TM Hearing allows for the submission of additional evidence or documents

When a trademark hearing is held, the applicant is given another opportunity to explain why his mark should be registered and why the Examiner should waive the objection remarks. At the hearing, the Applicant/TM Agent/ Attorney may also provide or submit any additional evidence or documents that can strengthen the case.

The Registrar has the authority to accept a trademark application subject to conditions, amendments, modifications, or limitations.

If a trademark is objected to by the trademark examiner, the hearing officer during the hearing has the authority to accept the trademark with certain conditions / limitations / amendments / modifications.

Frequently Asked Questions

How does the trademark hearing procedure work?

The procedure for a TM Hearing is as follows:

Execute POA/ Authorisation Letter
Analyse the Examination Report
Make submission of additional documents (if any)
Attend the trademark hearing with the Trademark Registrar.

Where is the date of the trademark hearing mentioned

The show cause notice includes the date of the trademark hearing date. If you wish to adjourn the hearing, the same can be done by filing form TM-M at least two days in advance.

Why should I care about trademark hearing after Accepted & Advertised?

Trademark Opposition is a situation where your trademark application has been accepted and advertised by the Trademark Registry. However, during the journal publication, there is timeline of 4 months under which any party can file for the Trademark Opposition by filing TM-O. If opposition has been filed, the status is changed to Opposed from Accepted & Advertised.

Why is it necessary to Attend a Trademark Hearing?

When an Examiner objects to a Trademark, the applicant is required to file a response. If the Examiner is not satisfied with the applicant's reply to the Examination report, a mark is issued for a show cause hearing.
Similarly, if a Trademark Application is published in the trademark journal and is opposed by the public, the applicant must file a reply with the Trademark Department. If the Examiner believes that the parties to the objection should be given a reasonable opportunity to be heard, a mark for a show cause hearing can be issued.

How can Compliance Calendar LLP assist me in Trademark Hearing?

We have the finest pool of resources from the Trademark Law who have the decades of experiences in handling Trademark Hearing. A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. The period of protection varies, but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees. Trademark protection is enforced by the courts, which in most systems have the authority to block trademark infringement. For any support, feel free to contact at info@ccoffice.in or connect at 9988424211.

© 2016 - 2024 Compliance Calendar LLP. See Terms of Use and Privacy Policy for more information. Unless otherwise indicated, all materials on these pages are copyrighted. No part of these pages, either text or image may be used for any purpose. Please see About Us to learn more about our firm. Please visit Refund Policy to learn about our refund and cancellation policy.