Trademark Opposition
A Trademark Opposition is a legal action before the trademark Registrar in which a third party attempts to prohibit another from registering a trademark. The trademark law in India is based on common law standards. Let’s understand in detail, the trademark opposition in India.
What is Trademark Opposition in India?
A trademark opposition is a type of objection raised by third parties when your trademark is accepted for advertisement in a trademark journal and becomes open for objection within 4 months. To ensure the authenticity of the marks registered in the registry and to defend the creator's interests from infringement, Indian trademark law was established and provided with sufficient checks and protections.Who is qualified to file a trademark opposition?
Any natural or legal person, such as organizations, partnership firms, or individuals, may file a notice of opposition under Section 21 of the Trademarks Act, 1999. An Indian or international client, a member of the public, a competitor, or anyone else may file a trademark opposition. In reality, if two or more people have the same complaints about a trademark, they may be joined together.In most cases, the following individuals file a trademark opposition:
- Holders of an earlier trademark application or registration for a similar Trademark for identical products.
- A person who has previously used the same or a similar trademark as the customer but has not yet registered it.
Filing an Opposition's Basic Requirements in India
A trademark will be challenged after it has been published in the Trademarks Journal for at least four months from the day it was first marketed or re-advertised. According to the Trade Marks Act of 1999, anybody may object to the registration of a mark that has been published in the Journal by filing a notice of opposition with the Registry in a specified manner and with the required fees. Any party may file a notice of opposition against a trademark under the Act, and the Opponent does not need to have an application or registry in India to do so.What are the grounds for the opposition in India?
- As described in Section 9 of the Act, absolute grounds of denial include the trademark not being unique or capable of separating the Applicant's goods/services from those of others, or the trademark being generic, descriptive, or common to trade.
- The trademark is phonetically, physically, conceptually, misleading, and deceptively similar/identical to the Opponent's trademark and/or in respect of similar goods/services, as given under Section 11 of the Act.
- Based on the specific nature of the case, other relevant grounds include the Opponent's well-known trademark, copyright of the artistic work, and geographic location.
What is the process of Opposition?
The following steps are involved in a trademark opposition:- The trademark name must be opposed once the equivalent trademark has been published in the Trademarks Journal inside an endorsed time of four months from the date on which it was publicized. The Registrar is required to serve a copy of the notice of opposition to the Applicant of the trademark within three months of receiving it.
- The Applicant must file a counter statement specifying the facts and submissions in favor of their application under opposition within two months of obtaining the notice of opposition. The Trade Mark Rules, 2017, provide a provision for facilitating the review by submitting a counter statement in support of the application before the service of the notice of opposition.
- The Applicant's trademark would be deemed worthless for non-prosecution if the Applicant fails to file a counter statement within the time limit. The opposition moves to the evidence stage if the Applicant files a counter statement.
- Normally, the Registrar would serve a copy of the counter-statement on the Opponent within two months of receiving it. The Opponent must file an affidavit through evidence in favor of the opposition with the Trade Marks Registry and serve a copy on the Applicant within two months of obtaining the counter statement.
- The Applicant must file its affidavit by way of evidence in support of the application with the Trade Marks Registry and serve a copy on the Opponent within two months of obtaining the affidavit by way of evidence in support of the opposition.
- The opposition/application may be considered rejected for non-prosecution if the affidavit in favor of the opposition/application is not submitted. Once the pleadings are completed, the lawsuit will be scheduled for trial. The Registrar will determine whether or not the trademark should be approved for registration after hearing all parties and considering the facts.
- An aggrieved party may file for an appeal of the Registrar's decision in the opposition proceedings by filing a review with the Registrar or an appeal in the High Court.
Required Documents
| Acceptable Document | Document Type | Additional Details |
|---|---|---|
| Application for notice of opposition | - | - |
| Evidences in support of application | - | - |
FAQs
You Ask, We Answer
A Trademark is an intellectual property related to a product or service that differentiates it from others. Due to some reasons, trademark officers can have objections on any trademark application which does not meet their legal norms for which application for trademark opposition is filed.
Yes, the objection can be filed on the basis of a pending application or usage. Common law rights are recognised under the Trade Marks Act of 1999.
When your trade mark status in the Indian Trade Mark Registry website shows “Objected” and the Registrar/Examiner has raised one or more objections in the Examination Report.
The response to an opposition in a trademark examination report can be submitted by the trademark applicant through IPR experts also.
No you cannot use because firstly reply for the same should be drafted and submitted within 30 days. Also your application will show the objected status of trademark application which means an objection is raised on the application filed by trademark department.
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