Filing a trademark application (Form TM-A) is only the first step. More than 60% of applications receive an official Examination Report raising objections under Section 9 (Absolute Grounds) or Section 11 (Relative Grounds) of the Trade Marks Act 1999.
Section 9: Lack of Distinctiveness
Section 9 objections arise when the examiner deems the mark descriptive of the goods or services (e.g., trying to trademark "Fast Delivery" for courier services). Overcoming this requires submitting documented proof of continuous commercial use, marketing expenditure, and acquired secondary meaning.
Section 11: Similarity with Existing Marks
Section 11 objections occur when the examiner flags visually, phonetically, or conceptually similar marks registered under the same or allied class. Overcoming Section 11 involves:
- Establishing phonetic and visual dissimilarities when viewed as a whole.
- Highlighting different target customer demographics and commercial distribution channels.
- Citing leading Supreme Court precedents on trademark comparison (the "Pianotist Test").