Trademark Opposition

TRADEMARK OPPOSITION

The Trademarks Act, 1999, provides for the registration of a trademark in India. The owner of the trademark has to apply to the Registrar of Trademarks (‘Registrar’) for obtaining the trademark registration. Upon receiving the application for registration, the Registrar will advertise the trademark in the trademark journal.

Any person can file an opposition for registration of the trademark published in the Trademark Journal. The opposition is to be filed to the Registry of Trademarks, where the trademark registration application is filed. When the trademark registry receives any kind of opposition to the trademark, it will conduct a hearing to decide the matter.

The Trademark Act, 1999 and the Trade Marks Rules, 2017 provides the process of trademark opposition.

INITIATION OF TRADEMARK OPPOSITION

Section 21 of the Trademarks Act, 1999, provides that any person can file a notice of opposition to the Registrar. This includes companies, individuals, trusts and partnership firms. Thus, any aggrieved third party can raise opposition to trademark registration.

GROUNDS FOR TRADEMARK OPPOSITION

The grounds on which a person can file opposition for trademark registration are:

• The trademark is identical or similar to an already existing registered trademark.
• The trademark is descriptive in nature.
• The trademark is devoid of distinctive character.
• The trademark is customary in the present language or the established practices of business.
• The application for trademark registration is made with bad faith.
• The mark is prevented by law or contrary to the law.
• The trademark is likely to cause confusion or deceive the public. 
• The trademark contains matters likely to hurt the religious feelings of any section or class of people.
• The trademark is prohibited as per the Emblem and Names Act, 1950.

PROCEDURE FOR TRADEMARK OPPOSITION

1. Opposition Notice

Within four months of the first date of appearance, any person may file a notice of opposition to a trademark that appears in the trademark journal.

It must be filed on Trademark Form 5 in the prescribed format and with the applicable fees.

1. Counter-Statement

The trademark registrar would serve a copy of the trademark opposition notice to the trademark applicant after the trademark opposition notice was filed with the registrar. The trademark applicant must file the counter statement within two months of receiving the opposition notices.

The trademark application will be "abandoned" if the trademark applicant fails to file the counter statement within the specified time frame. However, it is necessary to understand the status of trademark registration.

1. Hearing

After the evidence filing stage, the registrar shall send notices to both parties stating the date of hearing, which shall be at least one month after the date of the first notice. The hearing is based on the opposition notice, counter-statement filing, and evidence submitted. The registrar hears the case, and if any of the parties fails to appear for the hearing, the registrar will rule against them.

1. Appeals

The registrar decides whether the opposition was successful based on a review of the evidence submitted and a hearing of both parties, and thus whether the trademark should be registered or not. However, a party who is dissatisfied with the registrar's decision may appeal it to the Intellectual Property Appellate Board.

TIME LIMIT FOR TRADEMARK OPPOSITION

After the trademark advertisement in the Trade Marks Journal, any person can oppose the trademark registration for three months (which may be extended by a period not exceeding one month). Trademark opposition filings can only be done at the Trademark Registrar's office and cannot be taken to a Court or the Appellate Board directly (IPAB).

If a trademark opposition is successful, the trademark's registration will be rejected. The brand will be registered if the trademark opposition application is rejected.

FILING TRADEMARK OPPOSITION

1. Details of the trademark application against which the opposition is entered

The application number against which opposition is entered along with an indication of the goods or services listed in the trade mark application against which opposition is entered and the name of the applicant for the trade mark.

1. Details of earlier mark or the earlier right on which the opposition is based
   If the opposition is on account of an existing trademark application or registered trademark, then application number or registration number of the earlier mark. If the opposition is based on an mark which is alleged to be a well known trade mark, then an indication to that effect in which country or territory the earlier mark is recognized to be well known.
2. Details of the opposing party

If the opposition is entered by the proprietor of an earlier mark or of the earlier right, his name and address and an indication that he is the proprietor of such mark or right. If the opposition is entered by the successor in title to the registered proprietor of a trade mark who has not yet been registered as new proprietor, the name and address of the opposing party and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office. If the opposing party has no place of business in India, the name of the opponents and his address for service in India.

1. Grounds on which the opposition is based

DIFFERENCE BETWEEN TRADEMARK OBJECTION AND TRADEMARK OPPOSITION

People often get confused between trademark objection and trademark opposition. We have a table to explain the fundamental difference between the trademark objection and trademark opposition.

TRADEMARK OBJECTION	TRADEMARK OPPOSITION
A Trademark Examiner issues trademark objection.	A trademark gets opposition from a third party.
One does not need to pay fees.	Fees are required to be submitted along with the reply to the opposition.
A reply should be submitted within one month.	A reply should be submitted within three months(which may exceed not more than one month)
Trademark objection is a part of the registration process.	A trademark opposition is a different process.
If there is no response from the applicant, it leads to the removal of the trademark.	Similar is the case with trademark opposition; no response will lead to the removal of the trademark.
An appeal can be made after the rejection.	An appeal can be made after the judgment is passed.

 

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