Trademark Opposition

Once the registry accepts a trademark application, it undergoes a crucial step – publication in the government journal for four months. During this phase, any general public member can raise Opposition against the trademark. This stage holds significant importance in determining whether the trademark can proceed toward registration or if valid objections need to be addressed. IndiaFilings stands ready to offer expert assistance and guidance to navigate the?trademark opposition process, ensuring a seamless and effective resolution.

Under the Trademarks Act of 1999, trademarks can be registered in India. To do this, trademark owners must submit their application to the Registrar of Trademarks. Once the Registrar reviews the application, they will publicize the trademark in the official trademark journal. Any individual can challenge the registration of a trademark once it's listed in the Trademark Journal. Such challenges or oppositions should be directed to the Trademark Registry, where the original application was made. Should any opposition arise, the trademark registry will hold a hearing to resolve the issue.

The procedures and guidelines for trademark opposition are outlined in the Trademarks Act, 1999 and the Trade Marks Rules, 2017.*

  • According to Section 21 of the Trademark Act, 'any person' can oppose a trademark, irrespective of their commercial or personal interest.
  • A trademark can be countered by filed by a customer, member of the public or competitor, or any other person. Also, the person filing the trademark opposition needs to be a prior registered trademark owner.
  • After a trademark opposition is filed, both parties need to conclude whether the trademark should be abandoned or registered.
  • Anyone who believes that the published mark might create confusion among the public can file for the Opposition while defending the trademark lies in the trademark registrant's hands.

The Indian trademark law does not provide any specific grounds of opposition. There are various reasons a trademark opposition may be opposed mentioned below:

  • The trademark is similar or identical to an earlier or existing registered trademark.
  • The trademark is devoid of distinctive character.
  • The trademark is descriptive.
  • The trademark registration application is made with bad faith.
  • The trademark is customary in the current language and or in the established practices of a business.
  • The trademark is likely to deceive the public or cause confusion.
  • The trademark is contrary to the law or prevented by law.
  • The trademark is prohibited under the Emblem and Names Act, 1950.
  • The trademark contains matters that are likely to hurt any class or section of people's religious feelings.

The process of trademark opposition is as follows:

Initiating a Trademark Opposition

Suppose an individual wishes to oppose a trademark. In that case, they can submit their concerns to the Registrar within four months from the date the registration application was advertised in the trademark journal. This is done using Form TM-O, accompanied by the necessary fee.

This opposition notice should detail the trademark registration application, information about the opposing party, and the reasons for Opposition. Within three months of receiving this, the Registrar will forward the applicant a copy of the opposition notice.

Stage One: Responding with a Counter statement

Upon receiving the opposition notice, the applicant has a two-month window to submit a counterstatement using Form TM-O. This statement should clarify their stance. The Registrar will provide the opposing party with the applicant's counter statement within two months.

If the applicant doesn't respond within the specified two months, their trademark registration application is deemed abandoned, halting the registration process.

Stage two:Presenting Evidence in the Opposition Process

The party opposing the trademark must present Evidence backing their Opposition to the Registrar within two months of receiving the applicant's counterstatement. This Evidence should also be shared with the applicant.

Subsequently, the applicant has two months to submit Evidence supporting their application after receiving the opposition evidence. This Evidence must be shared with both the Registrar and the opposing party.

Optional Stage Three: If needed, the opposing party has another month to submit further Evidence after receiving the applicant’s Evidence. This, too, must be shared with the applicant and the Registrar.

Hearing & Determining the Outcome of the Opposition

The Registrar schedules a hearing after the evidence exchange, notifying both parties. Should the opposing party be absent, their Opposition is dismissed, leading to the trademark's registration. Conversely, if the applicant is absent, their application is considered abandoned and is dismissed. All written arguments provided by both sides will be taken into account.

Post deliberation, the Registrar determines whether to register the trademark or dismiss the application. This decision is then communicated in writing to both parties at their specified addresses.

Conclusion & Final Steps in the Trademark Opposition Procedure

If the Registrar rules in favor of the applicant, the trademark gets registered, and a certificate is issued. However, the trademark registration application is denied if the decision is in the opposing party's favor.

Both the applicant and the opposing party must adhere to filing requirements during the opposition process, as failure to do so can have serious consequences:

  • Abandonment of Opposition: Failure to submit counter-reply or supporting documents on time may lead to the abandonment of the Opposition, allowing the trademark application to proceed.
  • Removal of Trademark Application: If the applicant fails to respond or provide necessary Evidence, the trademark application may be removed, preventing registration.

The trademark opposition procedure in India ensures that only deserving trademarks are granted registration. It facilitates public participation and prevents conflicting trademarks from coexisting in the market. Timely adherence to timelines and filing requirements is crucial for effective case presentation.

If you're facing trademark opposition or considering opposing a trademark, consult IndiaFilings for expert guidance and support throughout the process.

IndiaFilings offers comprehensive assistance in the trademark opposition process in India: Expert Guidance: Our experienced professionals, well-versed in trademark laws, provide expert guidance and advice throughout the opposition process, ensuring a well-founded and effective opposition.

  • Expert Guidance: Our experienced professionals, well-versed in trademark laws, provide expert guidance and advice throughout the opposition process, ensuring a well-founded and effective opposition.
  • Thorough Trademark Search: Before initiating the Opposition, IndiaFilings conducts a meticulous trademark search to identify similar or conflicting trademarks. This step is critical for building a strong case and avoiding potential issues.
  • Document Preparation: Our experts assist in preparing all necessary documents required for filing the trademark opposition, ensuring accuracy and compliance with legal requirements.
  • Efficient Filing: IndiaFilings handles the entire filing process, submitting the Opposition to the Trademark Registry on your behalf. This streamlines the process and ensures timely submission.
  • Timely Updates: Throughout the process, we provide regular updates, keeping you informed about the progress of your trademark opposition.

By choosing IndiaFilings, individuals and businesses can navigate the?trademark opposition process efficiently, increasing the likelihood of successfully protecting their valuable trademark rights in India. Trust IndiaFilings to be your reliable and trusted partner for all trademark-related matters, including trademark search, trademark registration, trademark objections, trademark renewal, and more.

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.

RELATED GUIDES

Trademark vs Copyright vs Patent

  Trademark Patent Copyright
What’s protected Any word, phrase, symbol or design that recognizes and differentiates the source of one party's goods from those of another. Inventions, such as procedure, manufacturer, composition, machines of matter as well as improvements to these. Books, articles, music, photography, sculptures, dances, sound recordings, motion films and other original works of authorship.
Requirements for protection A mark must be distinguishable, in the sense that it must be able to identify the source of a certain good. A fresh, valuable, and unusual invention is required. A work must be unique, original, and created in a tangible manner.
Term of protection As long as the mark is used in commerce. 20 years Author’s life span+ 70 years.
Rights Granted Right to use the mark and to prohibit others from using identical marks in a way that could create confusion about the goods or services' origin. Right to restrict others from manufacturing, selling, or importing the patented invention. Copyrighted works have the power to dictate their reproduction, creative works, circulation, public performance, and display.

Trademark Opposition FAQ's

What exactly is trademark opposition?

Trademark opposition is a legal challenge against the registration of a trademark, initiated during its four-month publication period in the official government journal. This allows any member of the public to object to the trademark if they believe it infringes on their rights or is otherwise unsuitable for registration.

Who is eligible to file a trademark opposition in India?

Any individual or entity, including customers, competitors, or any member of the public, can oppose a trademark application. The opposer does not need to have a prior registered trademark or a direct commercial interest in the matter.

Where should one file a trademark opposition?

A trademark opposition must be filed at the same Trademark Registry office where the original trademark application was submitted. This ensures that the opposition is directed to the correct jurisdiction for the matter at hand.

What are the grounds for opposing a trademark?

Grounds include similarity to an existing trademark, lack of distinctiveness, descriptiveness, bad faith, customary usage, likelihood of confusion, illegality, prohibition under the Emblem and Names Act, 1950, and potential to offend religious sentiments.

What is the first step in initiating a trademark opposition?

The first step is to file a notice of opposition using Form TM-O within four months of the trademark's publication in the journal.

What happens after an opposition notice is filed?

The Registrar sends a copy of the opposition notice to the trademark applicant, who then has two months to respond with a counterstatement.

What if the applicant doesn't respond to the opposition notice?

If the applicant fails to respond within two months, their application is deemed abandoned.

What evidence is required in a trademark opposition?

Both parties need to submit evidence supporting their case to the Registrar and each other within specified time frames.

How is a trademark opposition resolved?

After evidence submission and a hearing, the Registrar makes a decision to either register the trademark or dismiss the application based on the arguments and evidence presented.

What happens if the Registrar rules in favor of the trademark application?

The trademark gets registered, and a registration certificate is issued to the applicant.

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