Trademark Registration Trademark Opposition Procedure in India
Trademark Registration Trademark Opposition Procedure in India
What is Trademark Opposition?
Trademark opposition refers to the legal process through which a third party challenges the registration of a trademark. It allows individuals or entities to object to the registration of a trademark if they believe it conflicts with their existing rights or violates the provisions of the trademark law.
Trademark opposition in India comes at a stage after the registrar has approved the trademark application on the grounds of distinctiveness and published the third-party opposition's trademark in the journal.
When a trademark application is filed, it goes through a publication process where it is published in the Trademarks Journal or Gazette to allow interested parties to review the application. During this publication period, any person or entity who believes that the proposed trademark infringes upon their rights can file an opposition.
The opposition is typically filed with the relevant trademark office or authority, such as the Intellectual Property Office in India or the United States Patent and Trademark Office (USPTO) in the United States. The opponent, also known as the opposer, submits a formal document called the Notice of Opposition, which outlines the grounds for opposition.
In India, the trademark registration opposition process allows third parties to challenge the registration of a trademark if they believe it conflicts with their existing rights or violates any provisions of the Trademarks Act, 1999. The opposition process provides an opportunity for interested parties to prevent the registration of a potentially conflicting or objectionable trademark.
Initiation of Trademark Opposition
Section 21 of the Trademarks Act, 1999, provides that any person can file a notice of opposition to the Registrar. This includes companies, individuals, trusts and partnership firms. Thus, any aggrieved third party can raise opposition to trademark registration.
Procedure for Trademark Opposition
The process of trademark opposition are as follows:
Notice of Trademark Opposition
Any person can file for trademark opposition to the Registrar within four months from the date of advertisement of the registration application in the trademark journal by giving a notice in Form TM-O and payment of fees.
The notice should contain the application (trademark registration application) details, opposing party details and grounds of opposition. The Registrar should serve the copy of the notice of opposition to the applicant (person who filed the trademark registration application) within three months of receiving the opposition notice.
The applicant must file his/her counterstatement to the notice of opposition to the Registrar in Form TM-O within two months of receiving the copy of the notice of opposition stating his/her facts. The Registrar will serve the copy of the counterstatement to the opposing party within two months of receiving the counterstatement.
Suppose the applicant does not file the counter statement within two months of receiving the notice of opposition. In that case, the Registrar will consider that the trademark registration application is abandoned and thus will not proceed to register the trademark.
The opposing party shall provide evidence supporting his/her notice of opposition to the Registrar in less than two months of getting the copy of the counterstatement filed by the applicant. The opposing party should also send all copies of the evidence to the applicant.
Upon receiving the evidence copy by the opposing party, the applicant should file his/her evidence in support of the trademark registration application within two months of receiving the opposing party’s evidence copy. The applicant must send his/her evidence to both the Registrar and the opposing party.
The opposing party can file further evidence within one month of receiving the evidence copies of the applicant. The opposing party must submit further evidence to both the Registrar and the applicant.
Hearing and Decision Concerning Trademark Opposition
The Registrar, after the receipt of evidence by both parties and further evidence of the opposing party, will give notice to both parties of the first date of hearing. If the opposing party is not present on the hearing date, the opposition will be dismissed, and the Registrar will register the trademark.
If the applicant is not present on the hearing date, the registration application will be treated as abandoned and dismissed. The Registrar will consider the written arguments submitted by both parties to the proceeding.
After hearing both parties and considering the evidence submitted by them, the Registrar will decide whether to proceed with the trademark registration or reject the trademark registration application. The decision of the Registrar will be communicated to both parties in writing at the address provided by them.
Time Limit for Trademark Opposition
After the trademark advertisement in the Trade Marks Journal, any person can oppose the trademark registration for three months (which may be extended by a period not exceeding one month). Trademark opposition filings can only be done at the Trademark Registrar's office and cannot be taken to a Court or the Appellate Board directly (IPAB).
If a trademark opposition is successful, the trademark's registration will be rejected. The brand will be registered if the trademark opposition application is rejected.
Filing Trademark Opposition
Details of the trademark application against which the opposition is entered The application number against which opposition is entered along with an indication of the goods or services listed in the trade mark application against which opposition is entered and the name of the applicant for the trade mark.
Details of earlier mark or the earlier right on which the opposition is based If the opposition is on account of an existing trademark application or registered trademark, then application number or registration number of the earlier mark. If the opposition is based on an mark which is alleged to be a well known trade mark, then an indication to that effect in which country or territory the earlier mark is recognized to be well known.
Details of the opposing party
If the opposition is entered by the proprietor of an earlier mark or of the earlier right, his name and address and an indication that he is the proprietor of such mark or right. If the opposition is entered by the successor in title to the registered proprietor of a trade mark who has not yet been registered as new proprietor, the name and address of the opposing party and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office. If the opposing party has no place of business in India, the name of the opponents and his address for service in India.
Grounds on which the opposition is based
Grounds For Trademark Opposition
The Indian trademark law does not provide any specific grounds of opposition. There are various reasons a trademark opposition may be opposed mentioned below:
The trademark is similar or identical to an earlier or existing registered trademark.
The trademark is devoid of distinctive character.
The trademark is descriptive.
The trademark registration application is made with bad faith.
The trademark is customary in the current language and or in the established practices of a business.
The trademark is likely to deceive the public or cause confusion.
The trademark is contrary to the law or prevented by law.
The trademark is prohibited under the Emblem and Names Act, 1950.
The trademark contains matters that are likely to hurt any class or section of people's religious feelings.
What is Trademark Opposition? Trademark opposition refers to the legal process through which a third party challenges the registration of a trademark. It allows individuals or entities to object to the registration of a trademark if they believe it ...
Trademarks are special unique signs that are used to identify goods or services from a certain company. They can be designs, pictures, signs or even expressions. It is important because it differentiates your products from the competitions. It can be ...
Trademark Registration cancellation Trademark registration cancellation refers to the legal process of revoking or invalidating a previously granted trademark registration. It is a procedure initiated by an interested party who believes that the ...
Trademark Registration Trademark registration is the process of legally securing exclusive rights to a trademark or brand name for goods or services. A trademark can be a word, phrase, symbol, design, or a combination of these elements that ...
In India, a Trademark is an essential tool for protecting the identity of a business. A Trademark is a sign or symbol used to distinguish the goods or services of a particular business from those of its competitors. The validity of a Trademark in ...