written by khatabook | November 17, 2022

Trademark Opposition under Trademark Law in India

×

Table of Content


A quick look at the general trademark filing process until registration in India would be helpful before going deep into trademark opposition proceedings. When examining a trademark application, the Registry determines whether the mark is distinctive. 

An examiner who finds the trademark remarkable and that no similar trademark already exists in the Trade Register will accept the trademark and publish it in the Trademarks Journal. Three months after the publication of the brand, third parties have the right to oppose it. A person who applies is called an applicant. Read on to learn more about the opposition trademark, notice of opposition trademark sample in India etc.

Did You Know? According to the Indian Trademark Association registry, 182,004 trademark oppositions are pending as of February 28, 2022.

What Is Trademark Opposition in India?

When the Registrar accepts your trademark application, the trademark journal publishes it. A third party may inspect it for four months when it is open for scrutiny. The end game of your opponent is to stop you from registering your brand name if they think your trademark violates any trademark rights during this period of advertisement.

Who Can Oppose a Trademark?

Section 21 of the Trademarks Act, 1999, provides that any person can file a notice of opposition to the Registrar. 

  • Those who wish to object to a trademark application should file a Notice of Opposition and pay the prescribed fee per Section 21 of the Trademarks Act, 1999. 
  • Opponents are the parties who file opposition notices. 
  • The opponent does not need to own a registered trademark. 
  • Buyers, customers, or members of the general public are all examples of possible purchasers. 
  • Because two similar marks on the market can only confuse part of the public, both parties are representing themselves and the public at large.

Also Read: Guide on Business Services and Consulting in Trademark Class 35

Trademark Opposition Filing Benefits

Below are the two main advantages of filing a trademark opposition in India.

1. Highly Effective Remedy For Owner of Trademark

A trademark opposition plays an essential role since it allows registered trademark owners to stop any other mark that could cause confusion or hinder/dilute their brand in the market.

2. Open Consultation With Public

To determine if a company can register a trademark, it must consult the public since the brand is created through public popularity.

Required Documents to File a Trademark Opposition

It has been suggested that a Trademark opposition should be filed after a Trademark is published in the Trademark Journal. Following list are the document needed to file a Trademark Opposition

1. Applicant's Details

  • Applicants' names, addresses, nationalities, etc.
  • Body corporates and other categories require a registration certificate.

2. The Power of Attorney

Filing on your behalf allows the attorney to oppose your trademark.

3. Affidavit

The trademark affidavit contains basic trademark information and proof of use.

4. Opposition's Mark in Detail

If you plan to file an opposition, you must provide detailed information about the mark, including its name and the primary reason for opposition.

Also Read: Trademark Class 32: Classification of Non-alcoholic Beverages

Grounds For Trademark Opposition 

Those who object to trademark registration can do so for the following reasons:

  • An existing registered trademark is identical or similar to the brand in question.
  • Trademarks are descriptive.
  • There is nothing distinctive about the trademark.
  • As a result of the business's established practices or the use of the present language, the trademark is considered customary.
  • There are indications of bad faith in the trademark registration application.
  • There is a law that prohibits the use of the mark.
  • Public confusion or deception is likely to result from the trademark. 
  • There are matters in the trademark that may hurt the religious sentiments of any group or section of the population.
  • Emblems and Names Act 1950 prohibits the use of the trademark.

Trademark Opposition Procedure

Following are the steps one should follow for trademark opposition in India.

Step 1: Opposition Notice (Rule 42)

A person interested in opposing the Trademark Registration must submit a Notice of Opposition in Form TM-O along with the prescribed fee within four months from the publication date of the advertisement in the trademark journal. In the opposition notice, you should give the opposing party's contact information, the grounds for opposition and the application against which the opposition is being filed. The Registrar shall notify an applicant for a trademark upon receipt of the notice.

Step 2: Counterstatement or Response To Opposition (Rule 44)

Suppose the trademark applicant accepts any facts alleged in the notice of opposition. In that case, the applicant must submit a counterstatement in form TM-O within two months of receiving a copy of the information from the Registrar. Within two months of receiving the counterstatement from the applicant, the Registrar shall provide a copy to the opponent. The application for trademark registration will be considered withdrawn if the applicant fails to file the counter statement within the prescribed time.

Step 3: Opposing Party's Evidence (Rule 45)

As soon as the counter statement is received, the opponent must file an affidavit supporting the opposition. Suppose the opponent intends to rely only on the information in the notice of opposition and does not intend to submit any evidence supporting his rival. In that case, he must inform the Registrar in writing. In any other case, you can assume that the opponent has abandoned his opposition notice.

Step 4: Evidence Supporting Application (Rule 46)

In addition to providing evidence, the trademark applicant must file an intimation with the Registrar within two months of receiving the opponent's evidence/intimation. Applicants who intend to use the counterstatement's facts but do not wish to submit any evidence must inform the Registrar and the opponent in writing; otherwise, the Registrar will deem the application abandoned.

Step 5: Opponent's Evidence Reply (Rule 47)

Additionally, the opponent will have the opportunity to submit any additional evidence within one month of receiving the applicant's evidence. Documents not in English or Hindi must be translated into those languages and submitted to the Registrar, with a copy provided to the other party.

Step 6: Opposition Hearing

A first date for the hearing will be given to both parties after the Registrar receives evidence from both parties. After receiving the first notice, the Registrar will hold the hearing one month later. The Registrar will ensure that both parties have an equal chance to be heard. In form TM-M and the prescribed fee, either party can request an adjournment of the hearing with a reasonable cause. Each party may request no more than two adjournments, with each adjournment lasting no more than 30 days.

Also Read: Trademark Class 27: Important Details On Carpets, Rugs and Mats

Hearing Adjournment 

By submitting form TM-M with a fee of ₹900, any party can apply for the adjournment of the hearing. The Registrar will postpone the hearing to a future date if it is satisfactory.

Notice of opposition by the Registrar of Trademarks

If a party to the proceeding submits written arguments, the Registrar will consider them. In writing, the Registrar shall communicate his decision to both parties after hearing them. The Registrar may abandon the application or opposition if the applicant or opponent does not appear at the adjourned hearing date and time mentioned in the notice.

Sample Notice of Trademark Opposition in India

Below is a sample notice of trademark opposition in India issued by the Registrar of Trademarks. An indication of the goods or services listed within trademark application against which opposition is sought.

 

Also Read: What Are Trademark Classes? Explained in Detail Along with Trademark Class List

Conclusion

In this article, you get a detailed overview of the trademark opposition process in India and the steps involved. The Trademark Journal allows anyone to oppose the registration of a trademark. One must file a trademark registration application at the Registry of Trademarks, a place to file trademark opposition. A trademark registry will conduct a hearing when it receives any opposition to a trademark. The Trade Marks Act, 1999 and the Trade Marks Rules, 2017 provide the process for trademarks' opposition.

Follow Khatabook for the latest updates, news blogs, and articles related to micro, small and medium businesses (MSMEs), business tips, income tax, GST, salary, and accounting.

FAQs

Q: Do I have the right to file an opposition based on my pending application and use it if my mark is not registered in India?

Ans:

Using a common law of passing off, one can oppose trademark applications even if they are pending or already in use. This law prohibits anyone who sells their goods/services as those of another and benefits from them.

Q: What is the best place to file an opposition?

Ans:

You should file your opposition notice with the trademark registry where the conflicting mark application has been filed.

Q: Is a Power of Attorney required when filing an opposition to a trademark?

Ans:

When filing an opposition notice, a power of attorney is generally required. It is also possible to file the POA later if it is unavailable.

Q: Are there grounds for opposing a mark if it is not registered?

Ans:

It is possible to raise a trademark opposition even if the trademark application is pending or has already been registered. Any person is prohibited from selling goods and services under the common law of rights.

Q: Can anyone oppose a trademark?

Ans:

Anyone can file a trademark opposition, but most oppositions are raised by trademark owners or those who use similar marks.

Q: How does the opposition process work if it is filed after three months?

Ans:

The trademark opposition must be accompanied by a request for an extension when filed after three months but before the expiration of the four months.

Q: How long does it take to file an opposition notice?

Ans:

Within three months of the trademark's publication in the trademark journal, an opposition notice can be filed and extended by one month.

Disclaimer :
The information, product and services provided on this website are provided on an “as is” and “as available” basis without any warranty or representation, express or implied. Khatabook Blogs are meant purely for educational discussion of financial products and services. Khatabook does not make a guarantee that the service will meet your requirements, or that it will be uninterrupted, timely and secure, and that errors, if any, will be corrected. The material and information contained herein is for general information purposes only. Consult a professional before relying on the information to make any legal, financial or business decisions. Use this information strictly at your own risk. Khatabook will not be liable for any false, inaccurate or incomplete information present on the website. Although every effort is made to ensure that the information contained in this website is updated, relevant and accurate, Khatabook makes no guarantees about the completeness, reliability, accuracy, suitability or availability with respect to the website or the information, product, services or related graphics contained on the website for any purpose. Khatabook will not be liable for the website being temporarily unavailable, due to any technical issues or otherwise, beyond its control and for any loss or damage suffered as a result of the use of or access to, or inability to use or access to this website whatsoever.
×
Disclaimer :
The information, product and services provided on this website are provided on an “as is” and “as available” basis without any warranty or representation, express or implied. Khatabook Blogs are meant purely for educational discussion of financial products and services. Khatabook does not make a guarantee that the service will meet your requirements, or that it will be uninterrupted, timely and secure, and that errors, if any, will be corrected. The material and information contained herein is for general information purposes only. Consult a professional before relying on the information to make any legal, financial or business decisions. Use this information strictly at your own risk. Khatabook will not be liable for any false, inaccurate or incomplete information present on the website. Although every effort is made to ensure that the information contained in this website is updated, relevant and accurate, Khatabook makes no guarantees about the completeness, reliability, accuracy, suitability or availability with respect to the website or the information, product, services or related graphics contained on the website for any purpose. Khatabook will not be liable for the website being temporarily unavailable, due to any technical issues or otherwise, beyond its control and for any loss or damage suffered as a result of the use of or access to, or inability to use or access to this website whatsoever.