All about Opposition to Trademark Registration

A trademark (popularly known as brand name) is a visual symbol which may be a word, signature, name, device, label, numerals or combination of colors used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. The legal requirements to register a trademark under the Act are:

• The selected mark should be capable of being represented graphically (that is in the paper form).
• It should be capable of distinguishing the goods or services of one undertaking from those of others.
• It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.

Every trademark being used shall be registered by the person claiming to be the proprietor of a used or proposed to be used mark with the Trademark Registry in Form TM-A and the Registrar on receiving such application cause such application to be advertised in the Trademark Journal for receiving opposition, if any. Accordingly, in this article, we shall study about what basically is “opposition to trademark”and it’s various aspect.

RELEVANT LAW

• Section 21 of the Trademark Act, 1999, and
• Rules 42 to 51 of the Trademark Rules, 2017.

1. Who Can Oppose The Trademark Registration Application?

“Any person” may give a notice of opposition to the registration of a trade mark. The basic intention is that the interest of general public at large is not affected and accordingly, any person who may having similar trademark or is of the opinion that the trademark under question should not be registered on any other valid legal ground can file opposition.

2. Grounds Of Opposition Of Trademark Registration Application

• That the mark is similar or identical to an earlier or existing registered trademark.
• That the mark is devoid of any distinctive character;
• That the mark is descriptive in nature;
• That the mark contains characters or indications that have become customary in the current language or trade practices;
• it is of such nature so as to deceive the public or cause confusion;
• it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
• it comprises or contains scandalous or obscene matter;
• its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950;

3. Flow Chart To Explain Procedure For Opposition To Trademark

4. Other important points related to Opposition of Trademark Registration

• The applicant/opponent may either file evidence in support of application/opposition or just mention the fact in writing and submit to the Registrar that they intend to rely on the facts stated in the opposition/counter statement, as the case may be.
• The period of two months for filing counter statement, submission of evidence in support of opposition/application shall begin from the date of delivery of physical copies of the documents, as the case may be, to the opponent or applicant. Further, in the event in case any of the party has submitted their part of the documents on the basis of electronic records available on the Trademark portal, then the requirement of sending physical copies shall be dispensed with.
• The opposition and counter statement shall mandatorily be verified paragraph wise.

5. Statutory Fees For Filing Opposition And Counter Statement

The statutory fees for filing opposition and counter statement is Rs. 3000 for physical filing and Rs. 2700 for online filing. Moreover, it is pertinent to mention that the aforementioned fees shall have to paid for every single opposition and also for filing counter statement to every single opposition.

6. FAQs On Opposition to Trademark Registration Application

Q.1 What if the timeline that has been mentioned to file counter statement or evidence in support of opposition/application has not been complied with?

In such a case, it shall be deemed that the particular applicant/opponent has abandoned his application or opposition. However, practically before abandoning the application or opposition, the Registrar schedules hearing to at least give an opportunity of being heard in respect of such delay to the parties.

Q.2 What if opposition is made by any person in respect of a single class only in case of a multi-class application?

In this event, the application for remaining class(s) shall not proceed to registration until a request in Form TM-M for division of the application together with the divisional fees is made by the applicant and the application for which the opposition has been filed shall proceed as per the aforementioned procedure only.

Q.3 Can I adjourn the hearing as scheduled by the Registrar to consider the opposition?

Although the Registrar gives notice of hearing at least one month prior to the date of hearing but still in case intended, the hearing can be adjourned maximum two times, for not later than 30 days each, provided the request for hearing is made in Form TM-M along with the fees and reasons for such adjournment is filed at least three days prior to the date of hearing.

Q.4 What if I am not able to file for the opposition in the period when the mark is open for public inspection and consequently, the mark gets registered?

In this case, the remedy lies with the jurisdictional civil court.

Q.5 What if I am aggrieved by any order of the Registrar of Trademark?

In this case, the remedy lies with the Intellectual Property Appellate Board (IPAB).

{The author i.e. Kajal Goyal is a Company Secretary in Practice at Kajal Goyal and Associates and can be reached at (M) 9999952595 and (E) cskajalgoyal@gmail.com}