Trademark Opposition

Trademark Opposition is filled by any person for registration of the trademark published in the Trademark Journal. When the trademark registrar receives opposition to the trademark, it will conduct a trademark hearing to decide the result of the case.

The trademark office checks for the trademark database and checks whether a similar trademark is already registered with the registrar or not. The Trademarks Act of 1999 is the governing act for opposition filed by a person who initiates the opposition proceedings against a trademark. The guidelines of the third party can also file the opposition as per Trademark Rules, 2017.

Trademark Opposition Process

The procedure to file for the opposition of the trademark is given in detailed steps:

Step 1 : Filling of Notice of Opposition -

The opposition notice must be filed within four months from the date of publishing of the advertisement in the Trademark Journal. The notice in Form TM-O is filled with the given fees. The notice must contain the details of the opposite parties and the grounds for filing the opposition trademark process.

The notice reaches the trademark registry where the officers verify the requirements and then it is sent to the applicant. The applicant goes through the issues raised and the concerns of the opponents of the third party for the hearing in court. The court hearing will take place in the same place where the opposition was filed by the third party also known as an opponent.

Step 2: Filing of Counter-Statement for Trademark Opposition India -

As per the Trademark rules, 2017, the counter-statement is filed after the notice of opposition by the applicant. The counter-statement shall be filled in Form TM-O. The period prescribed for filing is two months from the date of receipt of the opposition notice.

Step 3 : Production of Evidence -

The different types of evidence that need to be filled in by the opponent and applicant of the trademark are given below:

• Evidence in Support of Opposition –

  The opponent must provide evidence in support of the opposition in the form of an affidavit. There is a two month period from the date of receipt of the filled counter statement.

The opponent can choose to waive the filing of an affidavit given in trademark Opposition format under Trademark rules, 2017 if the opponent wants to rely on the facts which are stated in the opposition notice. The opponent must inform the other party and officials of the Trademark registry of such waiver, otherwise, the notice of opposition will be treated as abandoned.

• Evidence in Support of the Application –

  The applicant of the trademark registration is required to provide evidence in support of the application for registration of a trademark.

• Evidence in Reply –

  The opponent is given the option to present more evidence in support of the opposition as per Trademark rules, 2017. The presentation of such evidence shall be done within one month of receipt of the evidence.

Step 4: Hearing of Trademark Opposition –

The registrar of trademark appoints a hearing and the parties are notified about it. The hearing date should be at least one month after the date of the first notice of hearing. The parties to the hearing are allowed to notify the registrar about their intention of appearing in the hearing. The adjournment request is made under Form TM-M. It must be made at least three days before the date of the hearing. There can be a maximum of two adjournments requested by a party and the duration of each adjournment is restricted to not more than 30 days.

Step 5: Rejection of Trademark Opposition or Registration –

The decision for the registration of a trademark is a final step by the registrar. The aggrieved party from the decision of the registrar can challenge by filing an appeal before the Intellectual property appellate board.

When the registrar decides in favor of the applicant, then the trademark will be registered and the registration certificate is issued. In case the registrar decides against the applicant, then the trademark will be rejected.

Documents Required to File an Opposition for Trademark

The following document is required at the time of filing opposition are given:

• Details of the Applicant:

  Full name, address, nationality, etc.

• Power of Authorization:

  The authorization power allows the attorney of a trademark to file the opposition on the behalf of the applicant.

• Affidavit:

  It is the basic required information related to the trademark and date of first use and proof of use and evidence.

• Details regarding the Opposed Mark along with Grounds of Opposition:

  The detailed information related to the trademark against which the opposition needs to be filled.

Grounds for Trademark Opposition

Trademark registration can be opposed on the following grounds given as:

• The mark is identical or similar to an already existing registered trademark.
• The trademark is descriptive.
• The mark is confused with another trademark, an Olympic mark, an official mark, or a geographical indication registered in India.
• The mark which is prohibited under the Emblem and Names Act, 1950
• It includes a mark that is obscene or immoral
• The mark is made in customary language and the established practices of business
• The mark is contrary to the law or prevented by law
• The mark includes the matters that are likely to hurt the religious feelings of any class or section of people,
• The Trademark opposition grounds include the words used by another party or a confusingly similar mark in India
• The applicant has used the mark only as a license of another party
• The mark which is void of its distinctive character
• The Trademark application is filled with bad faith
• The trademark is likely to deceive or mislead the public or cause any confusion.

Process of Filing Notice of Opposition Online

The notice of opposition shall be in writing with all the details about the mark and the applicant’s mark and grounds of objection for infringement of the mark. The notice of opposition can be filled by anyone of the following:

• Any person can file a notice of trademark opposition and can be an individual, company, partnership firm, or trust.
• A joint opposition can be filed, when two or more persons have the same issue against a trademark.
• The owner who filled out the trademark application earlier.
• Prior use of such a trademark.

An applicant or his agent can file the notice of opposition at the Trademark online filing portal. It is also known as the official website of Intellectual property India. The steps for online filing are as follows:

Step 1: Log in to the IP India Online filing of Trademark

Step 2 : Select the option ‘File TM-O’ by clicking on ‘New Form Filling’.

Step 3 : After clicking on ‘New Form Filling’ then select ‘Notice of opposition’ with the application number with the details and attach notice of opposition with the prescribed government fee of Rs. 2700.

Format of Counter Statement of Opposition

The counter-statement trademark opposition format consists of the following:

1. The facts written in the notice of opposition are admitted or refuted by the applicant.
2. A paragraph-wise counter of all the grounds made in the notice of opposition.
3. The counter-statement must be verified by the applicant or by his agent referring to the numbered paragraphs of the notice of the counter-statement. The verification of knowledge and information received and known to be true.
4. The verification must be signed by the person and stating the date and place of signing the same.

The registrar must review all the formalities and serve a copy of the counter statement trademark opposition in India sample on the opponent within two months from the date of receipt.

The changes provided by the Trademark Rules, 2017 are provided in the following:

• The applicant can file the counter-statement based on the notice of opposition uploaded on the Trademark registry’s website.
• The provision of filing an extension to file a counterstatement has been done.

If the applicant fails to file its counter-statement within two months of the opposition, then it is deemed to have been abandoned for non-prosecution. If the applicant files the counter-statement within the prescribed time frame, the opposition will proceed to the evidence stage.

Trademark Opposition Cases in India

In Parle Products (P) Ltd. v J.P. and co. (1972), the plaintiff was a manufacturer of biscuits and was the owner of certain registered trademarks. The word ‘Gluco’ is used on their packaging with the color scheme, general set up and collection of names registered under the Trade Marks Act of 1940.

The wrapper is used for the sale of the biscuits called ‘Parle’s Gluco biscuits’ printed on the wrapper. It depicts a farmyard with a little girl in the center carrying a pail of water and cows.

The plaintiff claims that they have been selling their biscuits on an extensive scale and the official trademark opposition fee is Rs. 2,700 and it is filled within four months from the date of the Trademarks journal in which the application was published for several years under the said trademark, acquired goodwill and reputation in the market.

They discovered in March 1961, that the defendants were manufacturers, sellers and offers for scale biscuits in a wrapper which according to them was deceptively similar to their registered trademark. The plaintiff asserts that this act of the defendant constitutes an infringement of trademark rights.

In this case, the court held the packets that are of the same size, and the same colour in both wrappers. The essential features of both are that there is a girl with one arm raised carrying something with cows in the ground.

Trademark Opposition Timeline

According to section 21 of the Trademarks Act, 1999, any person may, within four months from the date of the advertisement or re-advertisement of an application for trademark registration. He can give notice in writing in the prescribed manner with payment of prescribed fees to the registrar for filing the opposition.

When the trademark status is marked as ‘opposed’, the registrar reviews the application for trademark and qualifies for registration which has not to be objected to by the Trademark examiner or where the objection raised by the department has been overcome, then in the next step the trademark gets published in the Trademark Journal.

The purpose of trademark opposition in publishing is to enable the public to view the trademark and submit an opposition against the same. When an opponent files an objection, the trademark status is marked as ‘opposed’.

Benefits of Opposition of a Trademark

The following advantages of opposition as given below:

Remedy for Trademark Owner:

The opposition is an efficient tool in preventing other trademark owners to continue similar marks as it may dilute their brand or can create confusion in the market dealing with similar goods.

Public Consultation:

The trademark is created based on public popularity and demand, then it is required to first consult the public before the approval of the trademark application for seeking registration.

The official trademark opposition reply fee is Rs. 2,700 and it is filled within two months from the date of receipt of the notice of opposition.