Trademark Opposition

Step by Step Trademark Opposition Procedure

Online Legal India LogoBy Online Legal India Published On 29 Aug 2022 Updated On 10 Jan 2023 Category Trademark

Trademark is a kind of Intellectual Property Rights of an individual. It differentiates between various products & services by providing a brand value to them. Trademark registration attaches importance to the products or services in the market & creates an image and possesses different characteristics. The Registration process for a Trademark is prolonged and also contains the advertisement of the particular mark in the Trademark Journal. Any person can start the procedure under the Trademark Act, 1999, for Trademark Opposition during the promotion of the application of Registration in Trademark Journal.

 

Under the Trademark Opposition, a third party or any other person apart from the original owner can stop a person or firm from acquiring Trademark Registration of a particular mark, which is different or is already in demand. The Trademark Opposition is done to sidestep chaos between customers about the trademarks which are availing good benefits or are in a good state. The Trademark Opposition is important for the security of Intellectual Property Rights.

What is a Trademark Opposition?

A Trademark Opposition comes in function when the Registrar authorizes the application of the Trademark Registration. A Trademark, when gets incorporated, access for the same is accomplished in the Registry of Trademark. The Trademark Register purity is an important matter, and for this cause, the Indian Trademark Act, 1999, has a scrutiny process to inspect and confirm the purity of the Register of Trademarks. 

Who can opt for filing a trademark opposition?

As per Section 21 of the Trademarks Act, 1999, any person can file a notice of trademark opposition to the Registrar. This possesses corporations, individuals, trusts & partnership firms. Therefore, any aggrieved third party can introduce Opposition to the concerned trademark registration.

Grounds for Trademark Opposition

A trademark application can be opposed on the following grounds as discussed below:

  • The Trademark that is being used is indecent, disreputable, or corrupt;

  •  It is also used is precluded by regulation or is disobedient to law;

  • It utilizes the applicant only as a licensee of some other party;

  • The Trademark that is used is devoid of its specific character;

  •  It is used for defining character;

  • The application was made in ominous faith;.’

  •  It is likely to confuse & mislead the common public;

  • The Trademark that has been used before, or another party utilizes a confusingly equivalent Trademark;

  •  It includes such subjects which can damage the religious sentiments of any section or class of people;

  • The use of Trademark is restricted under the Emblem & Names Act, 1950;

  •  It is identical to an existing registered Trademark, an Olympic mark, Official Mark, or a geographical indication registered in India;

  •  It is only a surname;

  •  It is a generic phrase for the associated services or wares;

  • The Trademark used is established in the current language or already established practices of business.

Essentials Required for Trademark Opposition

  • The Opposition to a Trademark is based on an already existing or previously registered trademark; the opponent is required to clearly clarify the details, application ID number, & the important date related to the already existing or registered Trademark. 

  • The Opposition can be filed by a license also & in that case, the name & address of the licensee must also be mentioned in addition to the particulars of the licensee, an indication that implies that the licensee is permitted to put the Trademark opposition.

  • In the cases, where the opposing party is an NRI or foreigner & having no zone of business, then the name of the opponents & the address for service in India is required.

  • The Opposition to a Trademark is based on an already existing renowned trademark or a Trademark having good prominence in the market; the opponent is needed to present any document which will act as proof of such an already existing renowned Trademark. Further, the opponent should cite an indication of the countries where the earlier registered Trademark is acknowledged to be a renowned existing Trademark. The opponent can also submit evidence of the Trademark application for Registration. 

Step by Step Procedure of Trademark Opposition

Filing of the Opposition Notice

  • The Opposition notice should be filed within four months from publishing the promotion in the Trademark Journal. 

  • The information is submitted in form TM-O along with the prescribed charge. The notice should contain all the details of the opposite parties and the grounds for filing the Opposition of Trademark. 

  • The information of the Opposition first goes to the trademark registry, where the officers verify the application and whether all the essentials are fulfilled or not. Once the officials are satisfied with all the essentials, the notice application is sent to the applicant for Trademark. 

  • The applicant for the Trademark then goes through all the issues raised and concerns of the opponents and prepares for the hearing in the court. The court hearing will take place in the same place where initially the Opposition was filed by the opponent.

  • The notice of Opposition to the Trademark must be filed in the same office where the applicant files the original application for Trademark Registration. For instance, The Head Office of Trademark Registry is in Kolkata, and the application for Trademark Registration is filed in Kolkata. So, the notice of Opposition to the Trademark will be filed at Head Office in Kolkata.

Filing for Counter-Statement

Rule 44 of The Trademark Rules, 2017, says that after the notice of Opposition is filed, the applicant for the Trademark Registration can file a counter-statement on his/her behalf. The counter-statement should be filed in the form TM-O. The time period specified for the filing of the counter-statement is two months from the date of receipt of the Opposition notice, & the time period of two months is not expendable. The counter-statement files should include the following:

  • A paragraph-wise encounter of every ground made in the Opposition notice by the opponent.

  • If any fact alleged in the Opposition notice is admitted by the applicant, then that fact should be set out in the counter statement.

  • The verification of the counter-statement should be signed by the person making the counter-statement and should state the place at which and the date on which the statement is signed.

  • The counter-statement should be verified at the foot of the opponent or by his authorized agent. The agent should specifically state, referring to the numbers of the paragraph of the Opposition notice, that what the agent verifies himself on his knowledge and what he verifies on a piece of information believed and received to be true. 

Evidence Production

  • Evidence in favour of the applicant

The applicant of the Trademark Registration is needed to provide pieces of evidence in support of the application for Registration of Trademark. The pieces of evidence in support of the application are files as per Rule 46 of the Trademark Rules, 2017. The support pieces of evidence for the application should be filed by the applicant within two months of the filing of receipt of the pieces of evidence/intimation of waiver by the opponent.

  • Evidence in favour of the Opposition

According to Rule 45 of the Trademark Rules, 2017, the opponent has to provide pieces of evidence in favour of the Opposition in the form of an affidavit. The details of evidence in support of the Opposition should be filed within two months from the date of receipt of the counter-statement. 

The opponent can also prefer to waive the filing of an affidavit under Rule 45 of Trademark rules, 2017, if the opponent solely wants to rely on the facts which are stated in the Opposition notice. 

Hearing

After the fulfilment of the evidence proposal stage, the Registry of Trademark fixes a hearing, & the parties are informed about the same. The date of hearing should be at least one month after the date of the first notice of hearing. The parties to the concerning hearing are given a chance to inform the Registrar about the purpose of appearing in the hearing. The adjournment request can be made under the form TM-M. The adjournment request should be made at least three days before the date of the hearing. A maximum of two adjournments can be asked by a party, & the duration of each adjournment is prohibited from being not more than thirty days.

Appeal

After listening to both the parties & evaluating the evidence presented by them, the Registrar will determine whether to move on with the trademark registration or reject the trademark application. The decision of the Registrar will be conveyed to both parties in writing at the address delivered by them.

Conclusion

The maintenance and invention of a brand is a big commitment, and many funds are required for the same. Hence, the application for the invention of a brand should pass through several reviews and scrutiny before getting registered. The Trademark Registration allows a brand to establish its validity and uniqueness in the market. Hence, Trademark Opposition is an essential and crucial stage in the trademark registration process. The Opposition is one of the most valuable remedies to ensure and safeguard your Trademark. The Opposition of Trademark should be filed in the specified period; otherwise, it will result in a setback of the right to file for Opposition. The limitation in the time period plays a vital role in vesting the remedy to the aggrieved person.


 


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