Trademark Opposition
Protect your brand. Don’t let others infringe on your trademarks. Act now and file a trademark opposition to defend your rights. Our experienced team will guide you through the process, ensuring the best outcome for your business. Take a stand today and secure your unique identity. Contact us for a free consultation.
Act Now and File a Trademark Opposition
Overview on Trademark Opposition
In India, the Trademarks Act of 1999 is the law that governs trademark application and registration process. When someone wants to register a trademark, they need to submit an online/ offline application using Form TM-A to the Registrar of Trademarks. After a successful examination, the proposed application is published in the trademark journal for 04 months.
If anyone disagrees with the applied trademark and proposed registration, they can file a trademark opposition application using Form TM-O. If someone’s mark is Opposed, the relevant pleadings between the Applicant and the Opponent starts and on the completion of the same, the Registrar then holds a hearing to decide on the matter. The trademark opposition process is governed by the Trademarks Act and the Trade Marks Rules of 2017.
Grounds for Trademark Opposition
The proposed trademark could be opposed in several cases such as:
- If it closely resembles an existing registered trademark,
- If it lacks distinctiveness or is too descriptive in nature,
- If it contains common or customary indications,
- If the application is made in bad faith,
- If it goes against the law or is prohibited,
- If it is likely to confuse or deceive the public,
- If it contains scandalous or offensive content,
- If it hurts religious sentiments, or
- If it violates the Emblems and Names (Prevention of Improper Use) Act, 1950.
Frequently Asked Questions
The time limit to file a trademark opposition in India is within four months of the publication of the trademark application in the Trade Marks Journal.
Trademark opposition can be filed if the proposed trademark is similar to an existing one, lacks distinctiveness, is descriptive, offensive, or against the law. It can also be opposed if it may cause confusion among the public or hurt religious sentiments.
Trademark objection is raised by the Trademark Registry during the examination process, and the applicant must respond to clarify or rectify issues for it to be advertised and proceed further. Trademark opposition, on the other hand, is filed by a third party to challenge the registration of a trademark after its publication in the Trade Marks Journal.
Trademark opposition can be resolved in the following ways:
- Providing strong evidence and arguments to successfully win the trademark opposition case.
- Making necessary corrections or amendments to your trademark application to address any concerns raised during the opposition process.
- If you believe that the case is not strong enough, you can withdraw your trademark application voluntarily.
To file a trademark opposition, the opponent needs to submit a Notice of Opposition with the Registrar of Trademarks within the prescribed time, stating the grounds for opposition along with the relevant form and prescribed fees.
The Counter Statement is filed by the trademark applicant in response to the Notice of Opposition. It should contain reasons supporting the trademark application and address the claims made in the Notice of Opposition.
The official trademark opposition fee is INR 2700 if filed online and INR 3000 if filed offline.
Eligibility to file a Trademark Opposition
The eligibility to file a trademark opposition is open to any individual or entity, regardless of their commercial or personal interests in the matter. The Trademark Act, specifically Section 21, allows customers, members of the public, competitors and anyone else with concerns about a trademark to exercise this right. Importantly, the person filing the opposition does not need to be a prior registered trademark owner, ensuring that trademark protection remains accessible to all who seek to preserve fair and distinctive branding in the market.
Documents Required For Trademark Opposition
To file a trademark opposition in India, one just needs to file the Opposition with the relevant form i.e. TM-O and the power of attorney if an agent or counsel is engaged.
Procedure for Trademark Opposition
The trademark opposition proceeding has several stages:
Stage I: Notice of Opposition
The first step to oppose a trademark is filing a “Notice of Opposition” within four months of the trademark being advertised in the Indian Trade Marks Journal. Anyone can file this trademark opposition notice using Form TM-O and paying the required fee, either online or in person. The notice should state the reasons for opposing the trademark and provide any supporting information. The Notice of Opposition is then officially served to the Applicant by the Trademarks Registry to notify the Applicant about the opposition.
Stage II: Counter Statement
The applicant has two months from the date of service of Notice of Opposition from the Registry to respond with a “Counter Statement.” In the Counter Statement, they must explain the reasons for their trademark application and address the claims made in the Notice of Opposition. There is no extension available to submit the Counter Statement. If the applicant fails to do so within two months, their trademark application is deemed to be abandoned.
Stage III: Evidence Filing under Rule 45
After receiving the Counter Statement from the applicant via service of registry, the opponent has two months to provide evidence by way of affidavit supporting their claims. However, if the opponent prefers to rely solely on the facts stated in the Notice of Opposition, they can choose to skip this step. If they decide to do so, they must inform the Trade Marks Registry in India and the applicant within the given time frame. If the Opponent fails to file either the evidence or letter of reliance as the case may be, a hearing is scheduled and on listening to the submissions, the Registrar either grants time to file the evidence or abandons the Opposition.
Stage IV: Evidence Filing under Rule 46
Once the applicant receives the opponent’s evidence or waiver intimation, they have two months to provide evidence in support of their trademark application and the points made in the Counter Statement. Alternatively, the applicant can choose to skip this step by submitting a letter that relies on the claims made in the Counter Statement. If the Opponent fails to file either the evidence or letter of reliance as the case may be, a hearing is scheduled and on listening to the submissions, the Registrar either grants time to file the evidence or abandons the Application.
Stage V: Evidence filing under Rule 47
This opportunity is given to bring closure to the opposition proceedings and also allows the opponent to respond to any evidence presented by the Applicant. According to Rule 47 of the Rules, there is a maximum time limit of two (2) months to submit additional evidence to support the eligibility of your trademark.
Stage VI: Analysis and Hearing
As per Section 21(5) of the Act, a hearing opportunity is granted to the parties involved. Due to heavy backlog of proceedings before the Registry, it takes time for the hearing to be scheduled.. The parties are informed about the hearing date. During this hearing, both sides present their arguments and evidence. After thoughtful consideration, the Registrar decides whether the opposed trademark should proceed with registration, and if so, any specific conditions or limitations that apply.
What after trademark opposition
If the trademark opposition is successful, it means that the brand’s registration will be denied. However, if the trademark opposition application is rejected, it indicates that the brand will be successfully registered.
Frequently Asked Questions
The time limit to file a trademark opposition in India is within four months of the publication of the trademark application in the Trade Marks Journal.
Trademark opposition can be filed if the proposed trademark is similar to an existing one, lacks distinctiveness, is descriptive, offensive, or against the law. It can also be opposed if it may cause confusion among the public or hurt religious sentiments.
Trademark objection is raised by the Trademark Registry during the examination process, and the applicant must respond to clarify or rectify issues for it to be advertised and proceed further. Trademark opposition, on the other hand, is filed by a third party to challenge the registration of a trademark after its publication in the Trade Marks Journal.
Trademark opposition can be resolved in the following ways:
- Providing strong evidence and arguments to successfully win the trademark opposition case.
- Making necessary corrections or amendments to your trademark application to address any concerns raised during the opposition process.
- If you believe that the case is not strong enough, you can withdraw your trademark application voluntarily.
To file a trademark opposition, the opponent needs to submit a Notice of Opposition with the Registrar of Trademarks within the prescribed time, stating the grounds for opposition along with the relevant form and prescribed fees.
The Counter Statement is filed by the trademark applicant in response to the Notice of Opposition. It should contain reasons supporting the trademark application and address the claims made in the Notice of Opposition.
The official trademark opposition fee is INR 2700 if filed online and INR 3000 if filed offline.