Trademark Opposition

Trademark Opposition is a proceeding before the Registrar of the Trademark Registry, wherein one party seeks to prevent another from registering a similar trademark. The Trademark Registry itself checks the uniqueness of the mark and only approves it if the subjected mark is not deceptively or identically similar to any other registered trademark. Thereafter, if the Registry office fails to check it properly and allows it to be registered, the mark will be published in the TM Journal from time to time. After the publication of the mark, any individual / entity are free to oppose the subject Trademark by mentioning their objection within 3 months, that can be extended to 4 months, to file opposition and commence the trademark opposition proceedings.

Who can commence Opposition Proceeding?

It can be commenced by 'any person' including an individual/ entity by filing Notice of Opposition along with mentioning their objections such as prior user or prior registered mark, etc.

Grounds to Oppose the Mark

It depends on facts and circumstances and differs from case to case; but there are some common grounds on which a person can oppose the mark, which are as follows:

1. If the mark is not of distinctive nature;
2. If the mark is descriptive in nature;
3. If the trademark is likely to deceive the public or cause confusion;
4. If the trademark is deceptively or identically similar to an existing or earlier registered mark;
5. Those marks which are likely to hurt any religious feelings of any section of group or class;
6. If the mark is prohibited under the Emblem and Names Act 1950.

Procedure to file Trademark Opposition in India

1. Filing a Notice of Opposition:

First step of opposition proceeding is to file the Notice of Opposition, being filed by the Opponent and verified at the Registry; if the opponent would find a subject mark similar to their registered mark, the notice will be served on the Applicant. An Opposition may institute against an application advertised in the TM Journal within a term of 4 months from the date of availability of that advertisement, and the term cannot be extended under any circumstances. Any person can oppose a trademark through filing Notice of Opposition filling out the form TM-O.

2. Filing of Counter-Statement:

Rule 44 of the Trademark Rules 2017 states that the Applicant of the subject mark can file a counter statement along with form TM-O, within the term of 2 months after being opposed by any person filing Notice of Opposition. If the Applicant fails to file the counter – statement, then registration of the subject mark is deemed to be abandoned; and later, it will be taken down from the TM Journal.

3. Filing of Evidence in support of Opposition:

As per Rule 45 of the Trademark Rules 2017, within the term of 2 months, the Opponent has to provide evidences in support of his opposition in form of an Affidavit. The Opponent has to update the Registry and the Applicant party within the specified time; otherwise, the opposition filed will be deemed to be abandoned.

4. Filing of Evidence in support of Application:

As per Rule 46 of the TM Rules 2017, the evidence in support of Application needs to be filed within the term of 2 months. The Applicant can file evidence, if necessary, in support of Trade Mark Application, once the Opponent party would file evidence in support of his opposition.

5. Filing of Evidence in Reply:

As per Rule 47 of the TM Rules 2017, the Application has to be filed by the Opponent to adduce the additional evidences within the term of 1 month upon receipt of Evidence in support of Application. Thereafter, both the parties are not allowed to produce any further evidences; unless more evidences are required from parties under the discretion of the Registrar subject to cost and terms; this is the last stage of opposition proceeding. Subsequently, the Hearing procedure begins and the Registrar, upon hearing both the parties and reviewing the evidence submitted, shall determine whether the trademark should be registered or not, thereby bring the opposition proceeding to a conclusion.