Trademark Hearing: Key Steps to Strengthen Your Case

Authors : Nilanshu Shekhar, Rishabh Manocha, Akanksha Anand

We have often been at the receiving end in defending IP practices in India by several clients and foreign associates. Most notable being, why do we get a Show-cause hearing notice for every trademark application in India?

Most of the time we have to defend my community, but there is a need to introspect and look for answers. Last year we received many transferred cases from overseas clients and analyzed that the if the response is submitted properly, there are less likelihood of receiving a notice for hearing.

Just for example an examination report raising objections related to Section 11 (Likelihood of Confusion with other marks) is responded in the following manner:

This is not an isolated instance, but after having analyzed over 500 such cases transferred to us from various clients last year we found similar responses in most of such matters.

Now, the question that come to my mind is:

Are these kinds of responses deliberately filed to attract a show-cause hearing?

The answer could be anybody’s guess.

We came across various hypotheses behind the possible reasons and would like your inputs/views on other reasons that might be fit to explain this trend:

Clients are not willing to pay for preparing the responses but are ready to shell out higher amounts in the hearing process.
Some firms offer a very low price for a bundled package for filing and responding to first office action, so it is obvious that the covering of costs will take place during hearing.
Firms have realized that it is imperative and howsoever good response you file there will be a hearing, so why waste your effort. However, based on our experience this in not true.
Simple way of earning more from the client.

View All

Trademark Hearing: Key Steps to Strengthen Your Case

Authors : Nilanshu Shekhar, Rishabh Manocha, Akanksha Anand

Just for example an examination report raising objections related to Section 11 (Likelihood of Confusion with other marks) is responded in the following manner:

This is not an isolated instance, but after having analyzed over 500 such cases transferred to us from various clients last year we found similar responses in most of such matters.

Now, the question that come to my mind is:

Are these kinds of responses deliberately filed to attract a show-cause hearing?

The answer could be anybody’s guess.

We came across various hypotheses behind the possible reasons and would like your inputs/views on other reasons that might be fit to explain this trend:

Clients are not willing to pay for preparing the responses but are ready to shell out higher amounts in the hearing process.
Some firms offer a very low price for a bundled package for filing and responding to first office action, so it is obvious that the covering of costs will take place during hearing.
Firms have realized that it is imperative and howsoever good response you file there will be a hearing, so why waste your effort. However, based on our experience this in not true.
Simple way of earning more from the client.

View All

Trademark Hearing: Key Steps to Strengthen Your Case

Authors : Nilanshu Shekhar, Risbabh Manocha, Akanksha Anand

Just for example an examination report raising objections related to Section 11 (Likelihood of Confusion with other marks) is responded in the following manner:

This is not an isolated instance, but after having analyzed over 500 such cases transferred to us from various clients last year we found similar responses in most of such matters.

Now, the question that come to my mind is:

Are these kinds of responses deliberately filed to attract a show-cause hearing?

The answer could be anybody’s guess.

We came across various hypotheses behind the possible reasons and would like your inputs/views on other reasons that might be fit to explain this trend:

Clients are not willing to pay for preparing the responses but are ready to shell out higher amounts in the hearing process.
Some firms offer a very low price for a bundled package for filing and responding to first office action, so it is obvious that the covering of costs will take place during hearing.
Firms have realized that it is imperative and howsoever good response you file there will be a hearing, so why waste your effort. However, based on our experience this in not true.
Simple way of earning more from the client.

View All

Trademark Hearing: Key Steps to Strengthen Your Case

Are these kinds of responses deliberately filed to attract a show-cause hearing?

Trademark Registration Process in India