Trademark opposition in India is a legal proceeding where a third party objects to the registration of a trademark that has been published in the Trademark Journal. It allows individuals or businesses who believe that the registration of a particular mark would harm their existing rights to formally challenge the application.
Key Aspects of Trademark Opposition in India
Trigger
It starts after a trademark application has been examined and accepted by the Trademark Registry, and then published in the Trademark Journal. Publication is a mandatory step before registration to invite potential oppositions.
Grounds for Opposition
An opposition can be filed based on various grounds, primarily under Section 21 of the Trademarks Act, 1999. Common reasons include:
Similarity to Existing Trademarks
The proposed mark is identical or deceptively similar to a prior registered trademark for similar goods/services, creating a likelihood of confusion.
Prior Use
The opponent has been using a similar mark earlier than the applicant, even if it’s unregistered. This relies on the common law principle of “passing off.”
Lack of Distinctiveness
The proposed mark is not inherently distinctive and is descriptive or generic.
Deceptive or Misleading
The mark is likely to deceive the public.
Bad Faith
The applicant is trying to register the mark with dishonest intentions.
Copyright Infringement
The proposed mark infringes on the opponent’s copyright.
Who Can Oppose?
Any “person” can file an opposition, which includes individuals, companies, partnerships, trusts, etc., if they believe they will be affected by the registration. This could be a competitor, a consumer, or anyone with a valid legal interest.
Timeline
The opposition must be filed within 4 months from the date the trademark is published in the Trademark Journal. This is a strict deadline.
The Trademark Opposition Process in India
Publication in the Trademark Journal
After the Trademark Examiner accepts a trademark application, it’s published in the official Trademark Journal. This is a public notice inviting opposition.
Filing the Notice of Opposition (Form TM-O)
Any aggrieved party can file a “Notice of Opposition” (Form TM-O) with the Trademark Registry within 4 months of the publication date. This notice must clearly state the grounds for opposition and the evidence supporting the claims.
Counter-Statement by the Applicant
The applicant (the person who applied for the trademark) is notified of the opposition. They have 2 months to file a “Counter-Statement” responding to the opposition’s claims. If the applicant doesn’t file a counter-statement, the trademark application is deemed abandoned.
Evidence Stage
Both the opponent and the applicant have the opportunity to file evidence to support their respective cases. This typically involves affidavits and documents.
- The applicant then files evidence in support of their application within 2 months of receiving the opponent’s evidence.
- The opponent may file evidence in reply within one month of receiving the applicant’s evidence.
Hearing
After the evidence stage, a hearing is scheduled before a Hearing Officer (usually a Senior Examiner or Deputy Registrar) at the Trademark Registry. Both sides present their arguments.
Decision
The Hearing Officer considers the evidence and arguments and issues a decision either allowing or rejecting the opposition.
Appeal
If either party is dissatisfied with the decision, they can appeal to the High Court. (The Intellectual Property Appellate Board – IPAB – has been abolished).
Key Considerations
Professional Help
Trademark opposition proceedings can be complex. It’s highly recommended to seek the our qualified trademark experts.
Evidence
Strong evidence is crucial. This can include prior registration certificates, proof of prior use, sales figures, advertising materials, market surveys, and any other documentation that supports your claim.
Cost
There are official fees for filing an opposition, and legal fees if you hire our qualified trademark experts.
Consequences
If the opposition is successful, the trademark application will be rejected. If unsuccessful, the trademark will proceed to registration.
Differences between Trademark Objection and Opposition
It’s important to distinguish between a trademark objection and an opposition:
Objection
Arises during the examination of the trademark application by the Trademark Examiner. It’s a communication from the Registry to the applicant, pointing out issues that need to be addressed.
Opposition
Arises after the trademark application has been accepted and published in the Trademark Journal. It’s a challenge to the registration from a third party.
In summary, trademark opposition is a vital mechanism to prevent the registration of marks that infringe on existing rights or are otherwise ineligible for registration, ensuring fair competition and protecting consumers from confusion. Get help from our trademark experts.