When you submit a trademark application, it enters a critical phase known as examination. This is where the registrar meticulously assesses both the formal technicalities and the substantive merit of your mark before advancing (or rejecting) it.
1. What Happens After Filing
Once your application is filed and the paperwork is complete, the Trade Marks Registry flags it as “marked for exam.” That means it’s queued for a detailed review.
2. Dual-Stage Review Process
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First-Level Examination: An Examiner reviews your application, checking for both formal compliance and substantive issues like similarity to existing marks or lack of distinctiveness.
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Second-Level Approval: The Examination Controller reviews the Examiner’s report. If satisfactory, the report is issued. If not, it’s sent back for revision.
3. Two Kinds of Objections
Objections can arise at two levels:
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Formal (Procedural) Objections: These include mistakes like incomplete documentation, missing a power of attorney, unclear class description, or incorrect format.
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Substantive Objections: These challenge the mark on legal grounds—like being too generic, descriptive, deceptive, or similar to an existing mark (grounds under Sections 9 and 11 of the Trade Marks Act).
4. Replying to the Examination Report
If objections are raised, you must respond within 30 days from the report’s issue. Failing to do so may lead to abandonment of the application. A proper response may clear the path for publication in the Trademark Journal.
5. Show-Cause Hearing
When the objections remain unresolved after your reply, the Registrar may call a formal hearing (show-cause hearing). This is your chance to present arguments and evidence before deciding whether the mark can proceed to publication.
6. If No Objection or Once Objections Are Resolved
Once all objections are cleared—either through satisfactory responses or a successful hearing—the mark is accepted. It then moves on to publication, opening the door to opposition from third parties.
Why This Stage Is So Critical
Examination is the litmus test. It filters out weak, confusing, or inappropriate marks before they reach public notice. A carefully prepared response to objections can be the difference between smooth sailing and legal deadlock.
| Stage | What Happens |
|---|---|
| Marked for Examination | The application is queued for review. |
| Initial Examiner Review | Checks formalities and legal grounds. |
| Examination Controller Review | Ensures the reviewer’s findings are sound before issuing. |
| Examination Report Issued | Objections (if any) are sent to the applicant. |
| Applicant’s Reply | Must be filed within 30 days to avoid abandonment. |
| Hearing (if required) | In-person or virtual session to argue remaining issues. |
| Acceptance & Publication | Clears the path for publishing in the TM Journal. |
