Over 10 years we help companies reach their financial and branding goals. Maxbizz is a values-driven consulting agency dedicated.

Gallery

Contact

+1-800-456-478-23

411 University St, Seattle

maxbizz@mail.com

Twitter Facebook-f Pinterest-p Instagram

TRADEMARK OPPOSITION

TRADEMARK OPPOSITION

How to register a trademark?

A trademark registration not only gives the owner the exclusive right to use the mark but also allows the owner to prevent using a similar mark that may confuse the public. Let us now look at how to register a trademark:

Once we file the trademark application, the registry will immediately assign the application number (TM number). Then the application is examined by the examiners and a report is issued. If there is any discrepancy, then the application would be objected to, and based on our response and arguments, the Registry may allow the application and publish it in the Official Gazette of the Trademark Registry.

There are two situations in which a refusal can be brought up against the registration of your mark during the trademark registration procedure. An objection is what is known as the first instance, and an opposition is what is known as the second.

What is Trademark Opposition?

If a third party is affected by the registration which might be granted, they can oppose the application which has been published in the TM Journal and the applicant will have to submit a counter-statement to the same within a specified period. Based on the arguments, the registry may grant the application and it may be registered.

Post the Trade Examination stage, if the Registry is satisfied, the application will be allowed to be published in the TM Journal. A Trademark is published in the Journal so as to allow any third party to submit any opposition against granting registration for such mark. Once the trademark application has been published in the Trademark Journal, any third party who is aggrieved by the trademark application may file an opposition against the registration.  The time limit for filing an opposition is three months, which may be extended by one month for valid reasons. The trademark status of your application will show “Opposed” when an opponent files an opposition. This can be made after the TM Application is submitted but before the registration of the mark.

Who can file an opposition?

According to Section 21 of the Trademarks Act of 1999, “any person” may submit a notice of opposition. In most situations, it is the owner of an earlier Trademark who holds a similar mark and has registered the same or a person who has applied for the same and is awaiting registration. 

Anyone who is a real or legal person may file an opposition against a trademark application, irrespective of any commercial or personal interest in the said application. Any of the following persons can file an opposition against a TM.

  • A business owner
  • A competitor
  • A consumer
  • The general public 

In P.N.Mayor v Registrar of Trademark (AIR 1969 Cal 80), it was held that “Any person” does not necessarily have to be the previous owner of a registered trademark; customers, buyers, or members of the public who are likely to use the goods or services may object to the registration of a trademark on the grounds of likely confusion or deception.

Grounds for opposition:

  1. A trademark that is similar to an existing mark [Section 11].
  2. A trademark that is devoid of any distinctive character [Section 9(1)(a)].
  3. Descriptive marks [Section 9(1)(b)].
  4. Generic marks [Section 9(1)(c)]
  5. A trademark that is likely to deceive the public or to cause confusion. (Section 9(2)(a))
  6. A mark contains elements likely to offend religious feelings [Section 9(2)(b)].
  7. Any mark that contains scandalous or obscene matter [Section 9(2)(c)].
  8. Any mark prohibited from use under the Emblems and Names (Prevention of Improper Use)Act, 1950 [Section 9(2)(d)].
  9. Any mark that shows the shape of goods [Section 9(2)(3)].

In short, the grounds for refusal of registration also act as the grounds for opposition. 

Handling of a Trademark Opposition:

Once an opposition is filed against a trademark application, the applicant must file a counter-statement (Form TM O) against the opposition, stating the facts and points in favor of registration. Once the counter-statement is duly filed, the opponent may file his evidence within two months from the date of receipt of the counter-statement.

If the opponent files his evidence, the applicant must file his evidence within one month. When all these documents have been filed, the Registrar will invite both parties or their trademark attorneys to appear before him. After hearing both parties, the Registrar will make an order on the same.

Procedure for filing an opposition :

The procedure of opposition is governed by the Trademarks Act,1999, and the Trademark Rules- Rules 42 to 48.

1. NOTICE OF TRADEMARK OPPOSITION

Rule 42 states that any party may file a notice of opposition (TM-O) against the registration of a trademark application within four months from the date of advertisement of the application for registration and pay the requisite government fee and obtain a receipt. Form TM -M, is filed for division of the application where objections fall in different classes; for which different fees will be applicable.

It shall include the following important elements:

  • Details in respect of application against which opposition made
  • Details in respect of earlier trademark or earlier right
  • Details in respect of the opposite party
  • Grounds on which the opposition is based
  • Signature and verification

The requirements with respect to each of the above is detailed in Rule 43 of the Trademark Rules.

2. COUNTER STATEMENT

The registrar may serve a copy of the notice of opposition received by the applicant. Rule 44 states that within two months of receiving the notice of opposition from the registrar, the applicant shall send a counter statement on the grounds on which he relies for his application in Form TM-O.

A copy of the counter statement shall be served to the person giving notice of opposition.

3. EVIDENCE STAGE

  1. a) Rule 45 states that the evidence in support of the opposition shall be submitted to the Registrar within two months of serving counter statement and the applicant will also give his evidence within two months. 
  2. b) Rule 47 states that evidence in reply can be given by the opponent again 
  3. c) Rule 48 talks about further pieces of evidence, if any.
  4. d) The Registrar will give the parties a reasonable opportunity to be heard under Rule 50.

4. HEARING STAGE

  1. After closing evidence, a notice of hearing will be given for a future date after 1 month.
  2. The parties will be allowed only two adjournments during the hearing for 30 days each. If the parties are not present on the adjourned date then the same may be abandoned. 3 days notice is required to be given in case of adjournments.
  3. The registry will also consider written arguments, if any in the final stage.
  4. After hearing both parties and considering the evidence and the objections raised by the parties, the Registry will decide whether registration is to be permitted or not, or if it is to be permitted on conditions.

5. FINAL DECISION AND APPEAL

  1. The decision will be communicated in writing at the address given for service. 
  2. The application may be abandoned if the counter statement is not filed within the prescribed time or in the case where the parties cease to carry on business in India.
  3. One can appeal to the IPAB- Intellectual Property Appellate Board if they are aggrieved by the decision.

Conclusion:

Navigating trademark opposition can be lengthy, often stretching over a year. Timely adherence to strict timelines is crucial, as missing them may lead to losing the case. Both the applicant and opponent have various chances to present their arguments and evidence, contributing to a careful evaluation of the trademark’s final status. This involves responding to objections, providing evidence, and attending hearings before the Trademark Registry. Given the complexities, consulting an experienced trademark attorney is advisable. The legal professionals can guide you through the intricacies of opposition proceedings, ensuring that your case is well-presented and increasing your chances of a favorable outcome. In essence, the journey to trademark registration involves diligence, and expert advice to secure exclusive rights to your mark.

FAQ

Frequently Asked Questions (FAQs):

How is Trademark opposition different from Trademark Objection?

When the trademark application is examined, the Registrar raises a trademark objection. A trademark opposition, on the other hand, is submitted by a third party—typically another trademark holder after the publication of the Trademark in the Trademark Journal.

Where to file the notice of Opposition in India?

  • One can file the notice of opposition on the ipindia website by filing Form TM-O and paying the requisite fee. If they fall under a different class then a separate fee will be applicable for each class.

What is the time limit for filing the opposition?

The opposition shall be filed within 4 months from the date of publication of the advertisement in the Trademark Journal.

Can a Trademark be opposed after registration?

It is recommended to raise the opposition before the stage of registration itself. Only Trademark Rectification is possible post-registration of a Trademark. 

TRADEMARK OPPOSITION
Brochures

Related Videos

Previous
Next

Our Services