Trademark Opposition

Trademark Opposition in India comes at a stage after the registrar has approved the trademark application on the distinctiveness factor and publishes the trademark in the journal for the third-party opposition. Anyone can oppose the published trademark within a period of 3 months which can be extended for a month more (3+1); beginning from the day it was first published. If the mark is opposed, an opposition proceeding is initiated. After which, both the parties involved need to come to a conclusion and the decision is taken. The decision whether the mark can be registered or abandoned would be made. There is no restriction on filing an opposition. Anyone who believes that the published mark might create confusion among the public can file for the opposition while the onus of defending the trademark lies in the hands of trademark registrant.

 

BENEFITS

HIGHLY EFFECTIVE REMEDY FOR TM OWNER

Trademark opposition plays a very eminent role as it is a chance for the registered trademark owners to stop any other mark that can hinder/ dilute their brand or cause any possible confusion in the market.

PUBLIC CONSULTATION

As the brand is created through the public popularity and demand, it is very important to consult the public for approval about the registrability of the applied trademark.

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    IPR

    DOCUMENT REQUIRED

    DETAILS OF APPLICANT

    Name, Address, Nationality, etc of the applicant.
    Body corporate /other categories need to provide with registration certificate

    POWER OF ATTORNEY

    It allows the attorney to file the trademark opposition on your behalf.

    AFFIDAVIT

    Affidavit with the basic information about the trademark and its user date and proof of use.

    DETAILS ABOUT THE OPPOSED MARK

    Detailed information about the mark against which the opposition is to be filed, i.e. name and basic grounds for filing the opposition.

    • If the trademark is similar or identical to an earlier or existing registered trademark.
    • If the mark is devoid of any distinctive character or is descriptive.
    • The trademark is likely to deceive the public or cause confusion.
    • If the mark is customary in the current language, or it is in the established practices of business.
    • If the mark is contrary to the law or prohibited under the Emblem and Names Act, 1950
    • The mark contains matters that are likely to hurt religious sentiments of any class or section of people.

    PROCESS

    NOTICE OF OPPOSITION

    Any Person Can File A Notice Of Opposition On A Trademark That Appears On Trademark Journal Within 4 Months From The Date Of The First Appearance. The Opposition Will Be Filled In The FORM TM -O, Fees For Filing The Same Is Around Three Thousand. Initially, There Were 74 Different Forms Available For Every Different Process, Which Has Been Amended In Trademark Rules In 2017, Currently There Are Just 8 Exhaustive Forms Covering Every Concerning Thing. The Notice Of Opposition Has To Be Filed And Contested At The Same Office Or Branch Where The Original Application For Trademark Registration Has Been Filed By The Applicant. The Head Office Of The Trade Marks Registry Is At Mumbai And Branch Offices Are At Ahmadabad, Chennai, Delhi, And Kolkata.

    COUNTER STATEMENT

    Rule 44 Of The Trademark Rules, 2017, States That After The Filing Of The Notice Of Opposition, The Applicant For The Registration Of Subject Mark, Can File A Counter Statement, In Form TM-O, Within 2 Months (Not Extendable) Of The Receipt Of The Notice Of Opposition. On Failure Of Filing The Counter-Statement The Application For Registration Deemed To Be Abandoned Or Deserted By The Applicant And The Registrar Will Take It Down From The Journal And Will Not Approve It For The Registers. Applicant Can Also File The Same On The Basis Of Electronic Copy Of Notice Made Available On Website Of Trademarks Registry.

    PRODUCING EVIDENCE IN TRADEMARK OPPOSITION

    Evidence In Support Of Opposition: Rule 45 Of The Trademark Rules, 2017, States That The Opposing Party Has To Produce Evidence To Support Its Objection Within 2 Months (Extendable By One Month) Of Receiving The Copy Of The Counter-Statement Filed By The Applicant. The Party Also Has The Option Of Refraining From Producing Any Evidence And Relying Solely On The Opposition Notice. Evidence In Support Of Application: After The Opposing Party Files Evidence In Support Of His Objections, The Applicant Is Also Allowed A Time Of Two Months To Produce Evidence In His Favor. He Also Has An Option Of Not Providing Any Evidence And To Rely Only On The Counter Statement As Provided In Rule 46, The Trademark Rules, 2017. Evidence In Reply: Under Rule 47, The Trademark Rules, 2017, The Opponent Is Given One Additional Month (Extendable By 1 Month) To File Evidence In Response To The Applicant's Evidence. Once This Phase Is Over Parties Are Not Allowed To Adduce Any Further Evidence. However, The Registrar Can Exercise His Discretion To Ask For More Evidence Subject To Cost And Terms. An Interlocutory Application Needs To Be Filled By The Concerned Party For This.

    HEARING

    After The Evidence Filing Stage Is Over The Registrar Shall Give The Notice To The Parties Stating The Date Of Hearing, Which Shall Be At Least One Month After The Date Of The First Notice. Hearing Is Based On The Notice Of Opposition, Counter-Statement, And Evidence Filed. The Parties Are Required To Notify The Registrar About Their Intention To Appear For The Hearing. There's An Option Of Adjourning The Hearing Also, And The Request For It Can Be Made Under FORM TM –M, At Least 3 Days Prior To The Hearing, However One Is Allowed A Maximum Of Two Times Only To Request For An Adjournment. Finally, The Matter Is Heard By The Registrar And Decided Upon Merits. If Any Of The Party Doesn't Show Up For The Hearing The Registrar Will Rule Against His Favor.

    IF APPEAL

    The Registrar Shall Upon Hearing Both The Parties And Reviewing The Evidence Submitted Decides Whether The Opposition Succeeds At Establishing Their Objection Or Failed To Do So, And In Turn Determines Whether The Trademark Shall Be Registered Or Not Thereby Bringing The Opposition Proceeding To A Conclusion. However, The Party Aggrieved By The Registrar's Decision May Challenge The Same By Filing An Appeal Before The Intellectual Property Appellate Board. Now In This Already Cumbersome Process, The Security Checks Provided In The Acts Become The Reason For Further Delaying Of The Trademark Registration Which Takes A Minimum Of 2 Years To Complete. Once The Mark Is Opposed It Is Imperative For The Applicant To Reply Vehemently And To Prepare His Defense In Order, It Is Also Advisable To Take Experts Help In The Process Of Registering A Trademark, That Will Help By Eliminating All The Chances Of Getting Objected Or Rectified, And An Unopposed Registration Is The Best Way Out There To Get The Registration Done Easily And In Time.

    FREQUENTLY ASKED QUESTIONS

    Any individual who thinks his/her brand name or reputation of the company may be damaged in any way by the registration of a certain mark may choose to oppose such registration by filing the notice of opposition

     

    The notice of opposition can be filed within three months, extendable by one month (3+1) from the date on which the trademark was published in the Trade Marks Journal. If the notice of opposition is filed after three months but before the expiry of four months, then it must be accompanied by a request for an extension by one month, giving sufficient reasons for the delay in filing the opposition

     

    In India, anyone can file for the Trademark Opposition. Usually, it is initiated by a person who is the owner of an earlier trademark or a mark that deals with similar goods/services; or that has a possibility of creating confusion or harm an existing mark can file an opposition, even if its own mark is not registered.

     

    Through a common law of rights of passing off, one can file an opposition even if the Trademark application is pending or already in use if not registered. This law prevents any person from selling his goods/services as that of another and benefiting from it.

     

    The next step is taken by the Registry. The registrar serves the copy to the opponent so that they can file a counter statement. This has to be filed within 2 months of the receipt of the notice of opposition. If it is not filed it is believed to be abandoned.

     

    In a case where the notice of opposition is filed on the use of the mark, it is essential to show that the disputed mark or logo has become distinctive and is recognized that of the plaintiff’s goods and services. Hence, any mark that can cause confusion among the consumers cannot be registered as it would harm the already existing users’ business.