Trademark registry generally issues examination reports on two basic grounds, i.e., under Section 9 or under Section 11 of the Trademarks Act, 1999. 

Section 9- Absolute grounds for refusal:  

(1) The trademarks–

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bonafide and established practices of the trade, shall not be registered:

Provided that a trademark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

(2) A mark shall not be registered as a trademark if–

(a) it is of such nature as to deceive the public or cause confusion;

(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;

(c) it comprises or contains scandalous or obscene matter;

(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).

(3) A mark shall not be registered as a trademark if it consists exclusively of–

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods.

Explanation- For the purposes of this section, the nature of goods or services in relation to which the trademark is used or proposed to be used shall not be a ground for refusal of registration.

Section 11- Relative grounds for refusal: 

(1) Save as provided in section 12, a trademark shall not be registered if, because of–

(a) its identity with an earlier trademark and similarity of goods or services covered by the trademark; or

(b) its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the trademark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.

(2) A trademark which–

(a) is identical with or similar to an earlier trademark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trademark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trademark is a well-known trademark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark.

(3) A trademark shall not be registered if, or to the extent that, its use in India is liable to be prevented–

(a) by virtue of any law in particular the law of passing off protecting an unregistered trademark used in the course of trade; or

(b) by virtue of the law of copyright.

(4) Nothing in this section shall prevent the registration of a trademark where the proprietor of the earlier trademark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12.

Explanation: For the purposes of this section, earlier trade mark means–

(a) a registered trademark or an application under section 18 bearing an earlier date of filing or an international registration referred to in section 36E or convention application referred to in section 154 which has a date of application earlier than that of the trademark in the question, taking into account, where appropriate, the priorities claimed in respect of the trademarks;

(b) a trademark which, on the date of the application for registration of the trademark in question, or where appropriate, of the priority claimed in respect of the application, was entitled to protection as a well-known trademark.

(5) A trademark shall not be refused registration on the grounds specified in sub-sections (2) and (3), unless objection on anyone or more of those grounds is raised in opposition proceedings by the proprietor of the earlier trademark.

(6) The Registrar shall while determining whether a trademark is a well-known trademark, take into account any fact which he considers relevant for determining a trademark as a well-known trademark including–

(i) the knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trademark;

(ii) the duration, extent and geographical area of any use of that trademark;

(iii) the duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trademark under this Act to the extent that they reflect the use or recognition of the trademark;

(v) the record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognized as a well-known trademark by any court or Registrar under that record.

(7) The Registrar shall while determining as to whether a trademark is known or recognized in a relevant section of the public for the purposes of subsection (6), take into account–

(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trademark applies.

(8) Where a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trade mark for registration under this Act.

(9) The Registrar shall not require as a condition, for determining whether a trademark is a well-known trademark, any of the following, namely:–

(i) that the trademark has been used in India;

(ii) that the trademark has been registered;

(iii) that the application for registration of the trade mark has been filed in India;

(iv) that the trademark–

(a) is well-known in; or

(b) has been registered in; or

(c) in respect of which an application for registration has been filed in, any jurisdiction other than India, or

(v) that the trademark is well-known to the public at large in India.

(10) While considering an application for registration of a trademark and opposition filed in respect thereof, the Registrar shall–

(i) protect a well-known trademark against the identical or similar trademarks;

(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.

(11) Where a trademark has been registered in good faith disclosing the material information to the Registrar or where the right to a trademark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trademark or right to use that trademark on the ground that such trademark is identical with or similar to a well-known trademark.

Documents required 

1. Trademark application number/acknowledgment. 
2. Proof of Applicant: ID (PAN/Aadhar) and Address Proof (Driving License/ Utility Bill/Bank Statement) of Applicant. 
3. Email Id and Mobile Number. 
4. Power of Attorney:A signed POA is required in favor of our registered trademark attorney or agent to allow us to file a reply to the examination report on your behalf. Once you make the payment and provide other documents, we will draft a POA and send it for your signatures. 

Contact us at +91-91 97166 64652 to file a reply to the examination report.