INTRODUCTION
After the trademark has been duly reviewed and approved for registration by the Registrar, the mark is published in the Trade Marks Journal. The motive behind this practice of publication in the Trade Marks Journal is to allow third parties an opportunity to view the trademark and file an opposition against it. The primary purpose is not let the interest of general public be affected by conflicting or confusing trademarks. An opposition proceeding can be initiated on the basis of any valid legal ground as entailed in the Trade Marks Act,1999.
PROCESS OF OPPOSITION
STAGE 1
STAGE 2
STAGE 3
Notice of Opposition: A notice of opposition can be filed by ‘any person’ within a period of four (4) months from the date of advertisement of a trademark in the Trade Marks Journal.
Counter Statement: The counterstatement shall be sent on Form TM-O within two months from the receipt by the applicant of the copy of the notice of opposition from the Registrar. A copy of the counterstatement shall be ordinarily served by the Registrar to the opponent within two months from the date of receipt of the same. If the Applicant fails to do so within this prescribed period, the trademark application is deemed to have been abandoned.
Evidence in Support of Opposition:
Within two months from service of a copy of the counterstatement, the opponent shall file evidence by way of affidavit in support of his opposition. He shall deliver to the applicant copies of any evidence including exhibits, if any and proof of service is required to be sent to the Registrar. In case opponent does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition, he shall intimate to the Registrar and to the applicant in writing. If an opponent fails to submit evidence in support of opposition, he shall be deemed to have abandoned his opposition.
Evidence in Support of Application:
Within two months of the receipt of Evidence in support of opposition by the applicant or of the intimation that the opponent does not desire to adduce any evidence in support of his opposition, the applicant shall file Evidence in support of his application. He shall deliver to the opponent copies of any evidence including exhibits, if any and proof of service is required to be sent to the Registrar. In case applicant does not desire to adduce evidence in support of his counter statement but intends to rely on the facts stated in the counter statement, he shall intimate to the Registrar and to the applicant in writing. If an applicant fails to submit evidence in support of counter statement, he shall be deemed to have abandoned his application.
Evidence in reply:
Within one month from the receipt by the opponent of the copies of the applicant's affidavit the opponent may submit evidence in reply and shall deliver copies of the same including exhibits, if any, to the applicant and shall intimate the Registrar in writing of such delivery.
Hearing
The Registrar, after the closure of the evidence, shall give notice to the parties of the first date of hearing. The decision of the Registrar shall be communicated to the parties in writing at the address given for service.
Registration or Refusal:
If the registrar’s decision is in favour of the Applicant, the trademark is registered subsequent to which a registration certificate is issued. If the registrar decides against the Applicant and in favour of the opposition, the trademark application stands refused.
FORMS & FEES
| Forms | Purpose | Government Fee(INR) |
|---|---|---|
| TM O | Notice of Opposition or Counter Statement | 2700 |
DOCUMENTS/ INFORMATION REQUIRED
- Complete name and address of the Opponent.
- Relevant advertisement page of conflicting trademark.
- Signed Power of Attorney.
TIMELINE
FAQS
Upon acceptance of application by the Registrar, the trademark application is published in the Trade Marks Journal. The publication in the Trade Marks Journal is to allow third parties an opportunity to view the trademark and file an opposition against it, if required. Therefore when there is an opposition filed by a third party, the trademark status reflects as 'Opposed'.
Opposition proceedings can be opposed or contested on the following grounds:-
- An identical or similar registered trademark is already in existence in the market.
- The mark is not distinct in character.
- The mark is descriptive in name and character. For example – Cold & Creamy for an Ice-cream brand.
- The trademark application is made in bad faith.
- The trademark is customary in the language that it is used in or in the established trade.
- The trademark may cause confusion or deception in the minds of public.
- The mark is contrary to law and prohibited by it.
- The trademark violates any provision of the Emblem and Names Act, 1950.
- The mark is likely to hurt religious or communal sentiments.
Statutorily, the Trade Marks Act, 1999 permits 'any person' to file a notice of opposition. This is inclusive of individuals, companies, partnership firms and trusts.
The time period for a third party to file an opposition application is four (4) months from the date of publication of the trademark in the Trade Marks Journal.
The notice of opposition is supposed to be filed at the same Trade Mark Registry where the application for the conflicting mark has been filed. For instance, if the application is filed at the Chennai office of the Registry, appropriate registry to initiate the opposition proceedings is Trade Marks Registry at Chennai.
Yes, a Power of Attorney is required to be submitted at the time of filing the Notice of Opposition.
The Trade Marks Act, 1999 recognises common law rights which mean that registration is not a mandatory requirement to oppose a trademark.
The Trade Mark Registry faces an enormous amount of backlog owing to which it usually takes as long as 3-4 years for a contested opposition to be settled and decided. However, calculating an exact time is not possible.
Yes, evidence that has not been submitted within the stipulated time period may be submitted as ‘further evidence’ at a subsequent stage. This, however has to be substantiated with an interlocutory petition enlisting the reasons for such delay in filing of evidence and seeking the Registrar’s permission to condone the delay.
Where an opposition is filed only for a particular class in respect of a single application, the application for remaining class or classes shall not proceed to registration until a request in Form TM-M for division of the application together with the divisional fee is made by the applicant.