Basis and justification of objections:

The Registrar to ‘refuse the application or’ ‘accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.’ Applicants and their representatives are entitled to expect the basis and justification of any objections to be clearly explained – see section 18(5). Consequently, Examiners will provide the factual and legal basis so that applicants can understand the objection(s) being taken against them and, if they wish, challenge the Examiner’s findings . There cannot be any hard and fast rules about the wording to use when objecting to a mark under any of the sections of the Act. Each case will need to be adapted to meet specific requirements and it should not look to be stereotyped .

Use in trade

It should be borne in mind that objections under Section 9(1)(b) can only be based upon the existence or likelihood of the sign being used for descriptive purposes in trade in the goods/services. One or two isolated examples of journalists using a word as a description will not, without more, serve to show that an apparently meaningless or inapt word is apt for use in trade as a description. On the other hand, a persistent pattern of descriptive use by journalists (particularly in trade papers) is sufficient to establish that the sign is liable to be used in trade as a description .

Use after date of application

Use after the date of the application is usually irrelevant. However, if an objection is raised under Section 9(1)(b) which is based primarily upon the descriptive meaning of the word(s) identified in the usual reference works, then examples of descriptive use in Online Trademark Registration in Coimbatore after the date of application may be relevant. This is because such examples confirm that the word(s) had descriptive potential at the date of application. In the absence of any other indication, we should take the date that the web-page was last updated as the date of the article for examination purposes.