What is Trademark Opposition – Format and Fees

Trademark Opposition is filled by a third party to prevent the proprietor from getting the Trademark registered if it is similar or identical to the one which is already used by the party. A person may file an opposition to a Trademark in form of a Notice of opposition that lays down the grounds on which the application is challenged.

When the mark is published in the Trademark Journal then the mark is open for opposition for a period of four months. If any third party opposes the mark, the opposition complaints shall be initiated and after the completion, the mark will be registered.

The party who wins an opposition can use the decision in court where it could be persuasive in an infringement case.

Who Can File Trademark Opposition?

Under Section 21 of the Trademark Act, 1999 read with Trademark Rules, 2017, any person can oppose the registration of a mark published or republished in the Trademark Journal within 4 months from the date of publication of the Journal by filling a notice of opposition with the Registrar in the Form TM-O.

The party filing the notice is called an Opponent. It is not needed to be a registered proprietor of a trademark. An opponent can be a purchaser, customer, or anyone from the public in general.

The reason behind the opponent is not only representing himself but the general public as having two similar marks in the market can result in confusion among the public. The following can file for trademark opposition India are:

·     Any person can file a notice of opposition and can be an individual, company, partnership firm or trust.

·     A joined opposition can be filled, when two or more persons have the same issue against a trademark.

·     The owner who has filled of the trademark application earlier.

·     Prior use of the such trademark.

What are the Grounds for Opposition?

A trademark application can be opposed on the given grounds as follows:

·     The mark is a generic word for the associated services.

·     The mark is primarily a surname

·     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

·     The Trademark opposition grounds include 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 mark is priorly 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.

What is the Procedure for Trademark Opposition?

The following are the steps for opposition trademark process given below:

1. Notice of Opposition – After the publication or advertisement of the mark in the Trademarks Journal, any person can oppose an application in India by filling a Notice of opposition in Form TM-O along with the prescribed fees.

2. Counter Statement – After filing the notice of opposition, a counter-statement must be filed within the two-month timeline on Form TM-O along with prescribed fees by the applicant. There is no extension to file a counter-statement which means if the other party fails to file a counter-statement within 2 months of receiving the notice. The counter statement trademark opposition format consists of the following:

·          The facts written in the notice of opposition are admitted or refuted by the applicant.

·          A paragraph-wise counter of all the grounds made in the notice of opposition.

·          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.

·          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:

1. The applicant can file the counter statement on the basis of the notice of opposition uploaded on the Trademark registry’s website.

2. The provision of filling an extension to file a counterstatement has been done.

3. Evidence in support of opposition – Within two months from the service of a copy of the counter-statement, the opponent must file evidence in support of the opposition by way of an Affidavit. The opponent also has the option to write to the registrar with trademark opposition reply fees stating that he does not desire to file evidence but instead intends to depend on the facts written in the notice.

4. Evidence in support of the application – Within two months of service of a copy of the evidence in support of the opposition, the applicant must file evidence in support of the Application by way of an affidavit and deliver it to the opponent copies.

5. Evidence in reply – Within one month, the opponent may leave with the registrar to file evidence by affidavit in reply to the Applicant’s evidence and deliver a copy of the such affidavit to the applicant.

6. Hearing – After the closure of Evidence, the Registrar shall schedule the Hearing and shall serve the notice of the first hearing to both parties to place their respective arguments and after hearing both the parties.

There are hearing boards as per the Jurisdiction for trademark opposition cases in India. On receipt of the Hearing within fourteen days the parties are required to notify the registrar of their intention to appear in the matter.

The Registrar shall decide whether the Trade Mark is to be accepted for registration or not and communicate his decision in writing to both parties.

The decision of the Registrar made in the opposition proceedings can be challenged by an aggrieved party by filing an appeal before the Intellectual Property Appellate Board within 90 days from the date of such decision.

Conclusion

The trademark application must pass through multiple checks and scrutiny before registration to prove its distinctiveness and validity. An opposition is an essential stage in the process of registration. It is the most important remedy to protect your trademark as well as secure your brand. The trademark opposition fees charged by the government for filing Form TM-O is Rs. 2700 per class. It is not necessarily required to be filled only by any registered proprietor of the mark; it can be filled by any person whose trademark is being copied.

The two hindrances in the registration of a trademark are namely; trademark objection and opposition. In the case not filling the reply, it can result in rejected or cancelled application. Because having two similar marks in the market can lead to confusion, the opponent's goal is to represent not only himself, but the public at large. In this blog, we have discussed the process and grounds of opposition in detail.