In the process of registering your trademark, there are two instances where a provision of refusal can be raised against the registration of your mark.
The first instance is known as an objection the second instance is known as an opposition.
An objection is raised by the examiner against the registration of a trademark. Usually, the examiner raises objections on the basis of Sections 9(1) or Section 11 of the Trademarks Act.
What is a Trademark Opposition?
After the examiner reviews your trademark and finds that it qualifies for registration, your trademark will be published in the Trademarks Journal. The purpose behind publishing a Trademark in the Journal is to enable any third party to view the trademark and file a trademark opposition against it. Simply put, a trademark opposition is filed by a third-party against the registration of your Trademark.
When an opponent files an opposition, your trademark status will reflect as 'Opposed'.
What is the time limit for filing an Opposition?
The third party has to file the trademark opposition within 3 months (extendable by 1 month) from the date of publication of the trademark.
Who can file a Trademark Opposition?
Statutorily, Section 21 of the Trademarks Act, 1999 states that 'any person' can file the notice of opposition. This includes individuals, companies, partnership firms and trusts. In fact, if two or more persons have the same issues against a trademark, they can be joined together as opponents.
Ordinarily, the following persons file a trademark opposition:
- The owner of an earlier trademark application or registration covering a similar Trademark for similar goods.
- A person who has used the same or a similar trademark prior to the client, but who has not sought registration of the trademark. (Prior User)
What are the grounds for filing a Trademark Opposition in India?
The various grounds on the basis of which a person may initiate Opposition Proceedings are:
- The trademark is similar or identical to an earlier or existing registered trademark.
- The mark is devoid of distinctive character.
- The mark is descriptive in nature.
- Application for the trademark is made with bad faith.
- The mark is customary in the current language or in the established practices of business.
- The trademark is likely to deceive the public or cause confusion.
- The mark is contrary to the law or is prevented by law.
- The trademark is prohibited under the Emblem and Names Act, 1950
- The mark contains matters that are likely to hurt religious feelings of any class or section of people.
Where to file the Notice of Opposition in India?
The notice of opposition should be filed at the trademark registry where the application for the conflicting mark has been filed. For instance, if the application is filed at the Mumbai office of the Trade Mark Registry, then the opposition proceedings must initiate in Mumbai only.
What is the procedure involved in Trademark Opposition in India?
The following stages are involved in the Trademark Opposition procedure:
- Notice of Opposition: Any person can file a notice of opposition on a trademark that is advertised in the trademark journal within 4 months from the date of advertisement.
- Counter Statement: Within 2 months of the receipt of the notice of opposition, the Applicant can file a counter statement. If the Counter Statement is not filed within 2 months, the Applicant is deemed to have abandoned the Trademark application.
- Evidence in Support of Opposition: If the Applicant files the Counter-Statement, within 2 months (extendable by one month) of the receipt of the counter-statement the Opponent must file evidence, by way of an Affidavit. The Opponent also has an option to write to the Registrar stating that he does not desire to file evidence but instead intends to rely on the facts stated in the Notice of Opposition.
- Evidence in Support of Application: Upon receipt of the evidence of the Opponent, even the Applicant is provided with 2 months (extendable by 1 month) for filing Evidence in Support of Application, if any.
- Evidence in reply: Additionally the Opponent is given 1 month (extendable by 1 month) to file Evidence in response to the Applicant's evidence.
- Hearing: Based on the notice of opposition, counter statement, and evidences filed, the Registrar shall call for a hearing. Within fourteen days of receipt of the notice of hearing, the parties are required to notify the Registrar of their intention to appear in the matter. Finally, the matter is heard by the Registrar and decided upon merits.
- Registration or rejection: If the registrar decides in favour of the applicant, the trademark will be registered and registration certificate will be issued. If the registrar decides in favour of the opponent, then the trademark application shall be rejected.
Thus the trademark opposition is an effective remedy available to the registered proprietor/ prior user of a trademark. All that the registered proprietor/ prior user is required to do is to be vigilant on trademark watch and initiate an appropriate proceeding at the right time.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.