PROCEDURE OF TRADEMARK OPPOSITION IN INDIA | OPPOSITION PROCEEDINGS IN INDIA

WHAT IS A TRADEMARK OPPOSITION?

A refusal can be raised against your Trademark only in two situations during the registration process. The first is referred to as an objection, while the second is referred to as an opposition. The examiner raises an objection to the registration of a trademark. Typically, the examiner will raise objections under Sections 9(1) or in section 11 of the Trademarks Act.

On the other hand, a ‘trademark opposition’ is a third-party objection filed within four months of the Trademark being advertised for the opposition.

Your Trademark shall be published in the Trademarks Journal after the examiner has reviewed it and determined that it qualifies for registration. The goal of publishing a trademark in the Journal is to allow any third party to see it and file a trademark opposition against it. Simply put, a trademark opposition is a challenge to your Trademark registration filed by a third party. The Registry will accept oppositions from any natural or legal person. Individuals, businesses, partnership firms, and trusts all fall under this category(s). Notably, the person filing the opposition does not need to have a commercial interest in the matter or a previously registered trademark with the Registry to file the opposition.

For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.

WHO CAN OPPOSE A TRADEMARK IN INDIA?

Any person may file an opposition against a trademark that has been published in the journal. Any registered trademark proprietor does not have to file an opposition. Any company, partnership firm, trust, or member of the general public who may be a purchaser, customer, or person who is likely to use the goods/services may file an opposition.[i]An Indian or foreign customer, a member of the public, a competitor, or anyone else can file a trademark opposition. In fact, if two or more people have similar complaints about a trademark, they can be grouped together as opponents.

The following individuals, on the other hand, are more likely to file a trademark opposition:

  1. Owner of a prior trademark registration or filing for an identical or equivalent Trademark for comparable products.
  2. Anyone that has used a trademark that is identical or equivalent to the client’s but has not registered it.

TIME LIMIT TO FILE TRADEMARK OPPOSITION

The opposition must be lodged within four months of the Trademark’s publication in the journal. The deadline of four months cannot be extended due to whatsoever reason. The parties shall strictly adhere to the time limits set out in the Trademarks Act as well as the Limitation Act during the opposition proceedings.

WHAT ARE THE GROUNDS FOR TRADEMARK OPPOSITION?

A party may object to a trademark for a number of reasons, the most common of which is a possibility of misunderstanding or confusion. Typically, trademark owners use trademark surveillance systems to receive notifications when someone tries to file a similar trademark for similar products or services. They’ll examine the mark with their trademark lawyers to see how it could jeopardize their trademark registration. In order to avoid competition, trademark owners often claim rights well beyond the reach of their registrations. This is referred to as “trademark bullying” because it happens when a large corporation attacks smaller businesses that may lack the expertise or resources to combat false claims.

Aside from the more popular likelihood-of-confusion oppositions, a person may bring an opposition for a variety of reasons. The numerous grounds on which a person can launch Opposition Proceedings are listed below:

  • The mark is confusingly similar to or equivalent to a previously registered trademark.
  • The mark has no distinguishing features.
  • The mark has a descriptive quality to it.
  • The trademark application has been initiated in bad faith.
  • The mark is common in today’s vocabulary or incorporates operations.
  • The Trademark is apt to mislead or confuse the public.
  • The Trademark is illegal or is prohibited by statute.
  • The Emblem and Names Act, 1950prohibits the use of the Trademark.
  • The mark includes material that could offend the religious sentiments of any class or group of people.

DOCUMENTS REQUIRED TO FILE A TRADEMARK OPPOSITION

  1. INFORMATION ABOUT THE APPLICANT: The applicant’s name, address, nationality, and other details. Registration certificates are required for body corporate and other categories.
  2. POWER OF ATTORNEY: It gives your solicitor the authority to file a trademark opposition on your behalf.
  3. AFFIDAVIT: Affidavit containing basic details about the Trademark, including the date it was first used and evidence of use.
  4. INFORMATION ON THE OPPOSED MARK: Detailed info about the mark against which the opposition will be filed, such as the name and the specific grounds for filing the opposition

For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.

STATUTORY FEES FOR FILING OPPOSITION AND COUNTER STATEMENT

The standard fees for filing an opposition and counter statement are INR 3000 for physical filing and INR 2700 for electronic filing.[ii] Furthermore, the above payments must be charged for each and every opposition, as well as for filing a counter-statement to each and every opposition.

TRADEMARK OPPOSITION: A STEP-BY-STEP PROCESS

STEP 1: SUBMITTING AN OPPOSITION NOTICE

A notice of opposition (TM-O) can be filed by anyone against an advertised trademark with the prescribed fee within four months of the date of publication of the Trademark in the journal. The details of the Trademark to be opposed, as well as the grounds for opposition, should be included in the notice of opposition.

STEP 2: SUBMITTING THE COUNTER-STATEMENT

The TM-O will be reviewed by the Trademark Registry before being sent to the other party. After receiving the notice, the other party must file a counter statement (TM-O) within two months of receiving the notice, along with the prescribed fee.

STEP 3: SUBMITTING EVIDENCE TO BACK UP THE OPPOSITION

Within two months of receiving the counter-statement under Rule 45, the opposition party may provide evidence in support of his opposition in the form of an affidavit to support his case. The opposing party may decide to forego filing such evidence in favour of relying solely on the facts.

STEP 4: SUBMITTING PROOF IN FAVOR OF THE APPLICATION

The other party must file proof in favour of the Application within two months of obtaining the opposition evidence or the applicant’s intimation of waiver, as required by Rule 46. The other party may choose to forego filing evidence in favour of relying solely on the counter-argument.

STEP 5: SUBMITTING REPLY EVIDENCE

Within one month of obtaining the proof in support of the Application or intimation of the waiver under Rule 47, the opposition party can file additional evidence in support of his opposition. The aim of this choice or rebuttal is to bring the proceedings to a close.

STEP 6: HEARING

The Registrar would set a date for the hearing after obtaining the notice of dissent, counter claims, testimony, and reply evidence. Within 14 days after obtaining the notice of hearing, the parties must inform the Registrar of their intention to attend. The parties must file Form TM-M at least 3 days before the hearing date to seek an adjournment. If either the claimant or the opposition is absent on the date of hearing or adjourned hearing, the Registrar may dismiss the Application if the defaulting party is the applicant, and the opposition may be dismissed if the opposing party is absent.

STEP 7: ACCEPTANCE OR REJECTION

If the Registrar agrees the proofs and proof are favouring the petitioner, The trademark registration claim will be processed. Otherwise, the resistance will be permitted, and the registration application will be denied.

STEP 8: IN CASE OF AN APPEAL

After hearing the sides and reviewing the facts presented, the Registrar establishes whether the opposition succeeded in forming their objection or declined to do so and then considers whether the Trademark should be registered or not, putting the opposition to a close. However, a party who is dissatisfied with the Registrar’s decision can file an appeal with the Intellectual Property Appellate Board.

BENEFITS OF FILING TRADEMARK OPPOSITION

  • For the owner of a TM, this is a highly effective remedy: Trademark opposition is extremely important because it allows registered trademark owners to prevent any other mark from hindering/diluting their brand or causing any possible confusion in the marketplace.
  • Consultation with the general public: Because the brand is built on public demand and popularity, it is critical to seek public approval for the registration of the proposed Trademark.

WHAT DOES IT MEAN WHEN YOU RECEIVE A “NOTICE OF DEFAULT”?

If you got a “notice of default”, that means you didn’t respond to a notice of opposition or didn’t have the details provided by the trial schedule. In certain cases, the TTAB would rule in favour of the opposing party. You will be entitled to file a motion to vacate the default judgment and proceed with the trial in certain cases. If a default judgment is imposed against you, it would bar you from filing any further applications for the same mark. You can’t ever go back to the USPTO and make new points.

HIRING OF A TRADEMARK ATTORNEY IN ORDER TO ASSIST IN RESPONDING TO A NOTICE OF OPPOSITION

Try hiring a trademark lawyer to defend you in front of the Trademark Trial and Appeal Board (the “TTAB”). When reacting to a Notice of Opposition, you must follow the legal criteria and make sure you meet all of the TTAB’s deadlines. Without the support of an advocate, it would be very difficult for a trademark owner to respond to a Notice of Opposition and continue to follow any of the provisions of the opposition case.

POINTS TO BE KEPT IN MIND

  • The applicant/opponent can either file information in favour of the application/opposition or simply state the fact in writing and inform the Registrar that they wish to depend on the facts specified in the opposition/counter-argument.
  • The two-month period for filing a counter-argument and submitting documentation in favour of an opposition/application begins on the day when physical copies of the papers are sent to the opponent or claimant, as the case may be.
  • Furthermore, if either of the parties had sent their part of the documentation using electronic records accessible on the Trademark site, the obligation of submitting paper copies will be waived.
  • The opposition and counter-statement must be verified paragraph by paragraph.

CONCLUSION

Developing and managing a brand is a major challenge that can cost a lot of money. As a result, before being registered, an application must undergo several tests and scrutiny to demonstrate its uniqueness and legitimacy. As a result, trademark opposition is a crucial step in the registration process.

You will pay all of your bills and wait several months for a trademark examining attorney to review your Application as a company owner or person applying for a trademark. If your Application passes all of the registration requirements at the conclusion of the review process, the inspector will release your Application for “opposition”. Once the mark has been opposed, the claimant must respond vehemently and plan his defense in advance. It is also prudent to get professional assistance in the process of registering a trademark, as this would serve to eliminate any risks of the mark being protested or corrected, and an unopposed registration is the only way to get the registration completed quickly and easily.

[i] Section 21, the Trade Marks Act, 1999.

[ii] First Schedule, Trade Mark Rules, 2017.

For more information, please contact us on info@trijuris.com or call us Mb. No. 85100 58386 or 9310 717274.