Overview of Trademark Opposition in India
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In India, the Trademarks Act of 1999 (referred to as ‘Act’ further in this article) forms the legal basis for Trademark Registration, protection, and enforcement. The owner of a proposed trademark has to file a Trademark Application with the Registrar of Trademarks (referred to as ‘Registrar’ further in this article) at the Trademark Office for its registration. Upon receiving the trademark application and going through a successful examination process, the Registrar publishes the proposed trademark in the trademark journal.
Any individual or entity can file an opposition against the proposed trademark published in the trademark journal. The notice of opposition has to be filed with the Registrar at the trademark office, where the trademark application for registration is filed by the applicant. When the Registrar receives any opposition against the proposed trademark, there shall be a hearing to decide upon the matter.
The Act and the Trade Marks Rules of 2017 together govern and deal with the mechanism of trademark opposition in India.
Initiating Trademark Opposition in India
As per Section 21 of the Act, any person can file a notice of opposition with the Registrar against the proposed trademark published in the trademark journal. It includes individuals, companies, trusts, and partnership firms. Therefore, it would be wise to state that any aggrieved third party can raise opposition against the registration of a proposed trademark.
Grounds for Trademark Opposition in India
- The proposed trademark is confusingly identical or similar to an already existing registered trademark;
- It is descriptive in nature;
- It doesn’t possess any distinctive character;
- It contains indications or marks that have become customary in the present language or the established practices of business/trade;
- The trademark application for registration is filed in bad faith;
- The proposed trademark is prevented by law or is contrary to the law;
- It is very much likely to confuse or deceive the general public at large;
- It contains scandalous or obscene content;
- It contains any matter or word likely to hurt the religious sentiments of any section or class of citizens of India; and
- It has a usage prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Trademark Opposition Process in India
- STAGE 1: Filing the Notice of Trademark Opposition– Any individual or entity can file the notice of trademark opposition with the Registrar within 04 months from the publication date of the proposed trademark in the trademark journal. The individual or entity has to submit a notice in Form TM-O and pay the prescribed fee.
The notice of opposition should include the trademark application details, the opposing party details, and valid grounds of opposition. The Registrar shall then provide a copy of the trademark opposition notice to the applicant, i.e., the entity or person who filed the trademark application for registration, within 03 months of receiving the same.
- STAGE 2: Filing of Counterstatement for Trademark Opposition Notice– The applicant must submit his counterstatement (mentioning his facts) to the Registrar against the trademark opposition notice in Form TM-O within 02 months of receiving the copy of the notice. The Registrar shall then provide a copy of the counterstatement to the opposing party within 02 months of receiving the same.
In the scenario where the applicant doesn’t submit his counterstatement within 02 months of receiving the trademark opposition notice, the Registrar shall consider that the application for trademark registration is abandoned and shall therefore not proceed to register the proposed trademark.
- STAGE 3:Piece of Evidence in Favor & Against the Trademark Opposition – The opposing party shall submit evidence supporting his notice of trademark opposition to the Registrar within 02 months of receiving the copy of the counterstatement submitted by the trademark applicant. The opposing party shall also send all the copies of the supporting evidence to the trademark applicant.
After receiving the opposing party’s copy of the evidence, the trademark applicant should submit evidence supporting the registration of his proposed trademark within 02 months of receiving the evidence copy from the opposing party. The trademark applicant is required to submit his evidence to the Registrar and the opposing party.
The opposing party can further submit another piece of evidence within 01 month of receiving the trademark applicant’s copy of the evidence. The opposing party is required to submit the evidence in question to the Registrar and the trademark applicant.
- STAGE 4: Hearing & Decision over the Matter – After receiving the evidence submitted by both the parties and the further piece of evidence submitted by the opposing party, the Registrar shall inform both the parties about the first date of hearing. In case the opposing party is not there on the hearing date, the opposition proceedings shall be dismissed, and the Registrar shall register the proposed trademark. If the trademark applicant is not there on the hearing date, the trademark application for registration shall be treated as dismissed or abandoned.
The Registrar shall take into account the written arguments submitted by both the parties in the opposition proceedings. Upon hearing the stance of both the parties and analyzing the evidence submitted, the Registrar shall decide whether to go ahead with the trademark registration or dismiss it. The Registrar’s decision shall be communicated to both the parties in writing at the address provided by them.
- STAGE 5:Conclusion of the Trademark Opposition Proceedings – If the Registrar decides in favor of the opposing party, the trademark application for registration shall be dismissed altogether. On the other hand, if the Registrar decides in favor of the trademark applicant, the proposed trademark shall be registered, and the applicant shall receive the trademark registration certificate. ✅ For more visit: https://www.kashishipr.com/
