Trademark Opposition

Trademark opposition in India comes at a stage after the Registrar has approved the trademark application on the grounds of distinctiveness and published the third-party opposition's trademark in the journal. Trademark is generally words, phrases, logos and symbols used by a producer or service provider to identify their goods or services. The process for trademark registration is lengthy and includes advertisement of the mark in the Trademark Journal. During the trademark advertisement or re-advertisement of an application for registration, any person may initiate trademark opposition proceedings under the Trademark Act of India. If a trademark opposition is raised, the opposing party will have the option to be heard and the trademark application will have the option to also be heard and respond to the opposition. In this article, we look at the procedure for trademark opposition in India.

Who can oppose a trademark?

Indian trademark law allows “any person” to oppose a trademark (under Section 21 of the Act). Following the principles set in P.N. Mayor v. Registrar of Trademarks (AIR 1969 Cal 80), “any person” need not be only a previous registered trademark owner; even a client, a buyer or a member of the public likely to use the products/services may object to the registration of a trademark based on probable deception or confusion. Therefore, there is no bar as to who can oppose a trademark application, and the Registrar only considers the merits of the opposition, and not the motive of the opponent

Who can file a Trademark Opposition?

Statutorily, Section 21 of the Trademarks Act, 1999 states that 'any person' can file the notice of opposition. This includes individuals, companies, partnership firms and trusts. In fact, if two or more persons have the same issues against a trademark, they can be joined together as opponents.

Ordinarily, the following persons file a trademark opposition:

1. The owner of an earlier trademark application or registration covering a similar Trademark for similar goods.

2. A person who has used the same or a similar trademark prior to the client, but who has not sought registration of the trademark. (Prior User)

Trademark Opposition Time Limit

After three months after the trademark advertisement in the Trade Marks Journal, any person may dispute the trademark registration (which may be extended by a period not exceeding one month). Trademark opposition filings must be made at the Trademark Registrar's office and cannot be taken immediately to a Court or the Appellate Board (IPAB). If a trademark objection is successful, the registration of the trademark will be denied. If the trademark opposition application is denied, the brand will be registered.

What are the grounds for filing a Trademark Opposition in India?

The various grounds on the basis of which a person may initiate Opposition Proceedings are:

1. The trademark is similar or identical to an earlier or existing registered trademark.

2. The mark is devoid of distinctive character.

3. The mark is descriptive in nature.

4. Application for the trademark is made with bad faith.

5. The mark is customary in the current language or in the established practices of business.

6. The trademark is likely to deceive the public or cause confusion.

7. The mark is contrary to the law or is prevented by law.

The trademark is prohibited under the Emblem and Names Act, 1950

8. The mark contains matters that are likely to hurt religious feelings of any class or section of people.

Procedure Pertaining to Trademark Opposition

1. Notice to Raise Opposition for a Trademark: Any person, which includes both individuals and companies, can raise opposition to a trademark within four months from the date of advertising the trademark in the trademark journal. The opposition should be filed in the form TM-O along with the stipulated fee. The notice should specify the details of the respective trademark such as the registration details, along with the grounds of opposition, and details of the individual or organisation that is opposing the trademark. The applicant should duly be furnished with a copy of the opposition thus raised, within three months of receiving such notice.

2. Filing of Counter statement: Once the applicant receives the notice of opposition, the next logical action on the part of the applicant to perform is to file the counter statement for the opposition raised. The counter statement should be filed using Form TM-O within a time frame of two months of receiving such notice. The counter statement should be stating the facts and should be answering as to why the respective trademark is valid against the opposition raised. If the applicant fails to file the counter statement within the stipulated time, the Registrar will consider the application abandoned and will not proceed further with the registration of the trademark.

3. Evidence Involved in Opposition and Counter statement: The party raising the opposition shall furnish the required evidence to the Registrar within two months of receiving the applicant’s counter statement. The opposing party should also send copies of such evidence to the applicant. The applicant should thereafter file adequate evidence for the trademark registration within two months of receiving such copies from the opposition. The evidence must be sent both to the Registrar and the opposing party.The opposition can file further evidence if needed within one month of receiving the notice from the applicant. Once again, the opposing party has to dispatch any such evidence to both the Registrar and the applicant

4. Registrar’s Decision with Respect to the Trademark Opposition: The Registrar after a thorough analysis of the notices and pieces of evidence filed by the parties, calls both the applicant and the opposing party for a hearing by sending them a notice. If the opposition fails to make an appearance on the first date of the hearing, the Registrar will dismiss the opposition and will proceed with the registration of the trademark favoring the applicant. Alternatively, if the applicant is absent, the trademark application will be deemed abandoned and will be dismissed.

What services does The Startup Trends provide in terms of trademark opposition?

Our trademark opposition services include the following:

1. We will prepare the Trademark opposition response for you.

2. If necessary, appear through a lawyer / Attorney.

3. We will file strong counter statements for trademark opposition along with the necessary documentation.

4. Format for Responding to Trademark Opposition.

5. Updates on IPR-related developments (Intellectual property).

6. We are also working on creating a Compliance calendar for your business.

7. Free consultation on trademark opposition counter statements.