An Inside Look at Trademark Opposition
A trademark opposition unfolds as a legal event that transpires once a trademark application is lodged with the appropriate trademark office and before its formal registration. The mechanism allows stakeholders with vested interests to contest a pending trademark’s registration, which they believe might impinge on their pre-existing rights or bear too close a resemblance to their proprietary trademark.
The public announcement of a trademark application for opposition is indicative of it clearing the preliminary assessment by the trademark authorities and now being subject to public review. Throughout this window, usually defined for a specific period (for instance, 120 days), any individual or organization who anticipates a detrimental effect from the trademark’s registration can lodge an opposition.
The opposition should be submitted to the relevant trademark office and detail the reasons for the opposition, such as existing trademarks, potential confusion, dilution, or other legal concerns. The opponent or the objector is fundamentally questioning the applicant’s entitlement to register and utilize the disputed trademark.
Following the submission of an opposition, the applicant or the respondent is accorded a chance to respond and put forth arguments in favor of their trademark registration. Typically, the opposition proceeding involves scrutinizing evidence, legal arguments, and at times, oral hearings before arriving at a final decision.
Section 21 of the Trademark Act permits ‘any person’ to oppose a trademark, independent of their commercial or personal stakes in the issue.
A trademark can be contested by a customer, public member, competitor, or any other person. Moreover, the individual filing the trademark opposition should have prior registered trademark ownership.
1. Trademark Holders: Proprietors of existing registered trademarks or applications awaiting approval who believe that the new trademark could violate their rights or generate confusion with their marks.
2. Competitors: Other businesses or individuals functioning in the same industry who deem that the registration of the trademark might create unfair competition or customer confusion.
3. Consumer or Industry Groups: Non-profit entities or trade associations that safeguard the interests of consumers or businesses in a specific industry and believe that the trademark registration might harm their members or the public.
A trademark opposition can be contested for various reasons, including:
The trademark opposition procedure entails several key stages.
1. Submission of Opposition Notice
Within four months of the first date of appearance, any person may file an opposition notice against a trademark that appears in the trademark journal. It should be lodged on Trademark Form 5 in the specified format and accompanied by the applicable fees.
2. Respondent’s Counter-Statement
Upon receipt of the trademark opposition notice, the registrar would serve a copy to the trademark applicant. The applicant must file a counter-statement within two months of receiving the opposition notice. Failure to do so within the stipulated time results in the “abandonment” of the trademark application.
Subsequent to the evidence submission stage, the registrar sends notices to both parties, indicating the hearing date, set at least one month post the first notice date. The hearing is predicated on the opposition notice, counter-statement, and evidence provided. Should any party fail to attend the hearing, the registrar would rule against them.
The registrar determines whether the trademark should be registered based on the presented evidence and the hearing. However, if a party disagrees with the registrar’s decision, they can appeal to the Intellectual Property Appellate Board.
The filing process for a trademark opposition involves several key details:
1. Details of the Opposed Trademark Application
The application number against which the opposition is being filed, along with the goods or services listed, and the name of the applicant.
2. Details of the Earlier Mark or Prior Right
If the opposition is based on an existing trademark application or registered trademark, then the application number or registration number of the earlier mark should be provided.
3. Details of the Opposing Party
If the opposition is entered by the proprietor of an earlier mark or of an earlier right, his name and address should be included.
Here are some frequently asked questions about trademark opposition.
1. What is Trademark Opposition?
Trademark opposition is a mechanism that allows a party to contest the registration of a trademark that they believe could adversely impact their brand name or company’s reputation.
2. What is the Timeframe for Filing a Trademark Opposition?
A party can file an opposition notice within three months (extendable by one month) from the date of the trademark’s publication in the trademark journal.
3. What if the Opposition is Filed After Three Months?
If the trademark opposition is filed post three months but before the four-month expiration period, the notice of opposition should be accompanied by a request for extension, providing a sufficient reason for the delay.
4. Who Can Oppose a Trademark?
While anyone can file a trademark opposition, it is usually lodged by a party who owns a similar trademark or operates in a similar industry.
5. Can a Trademark Be Opposed Even If It’s Not Registered?
Yes, a trademark opposition can be filed even if the trademark application is pending or already in use. Common law rights prevent any individual from selling goods or services under a misleading or similar trademark.
6. Is it Necessary to Submit the Power of Attorney While Filing a Trademark Opposition?
Typically, a power of attorney is required at the time of filing the opposition notice. However, it can be submitted at a later stage if it’s not available at the time of filing.
7. Where Should an Opposition be Filed?
The opposition notice should be filed at the trademark registry where the conflicting mark application has been filed.
For further queries, you can connect with us at 8800839633 or mail us at email@example.com. This article is a contribution from Ms. Anupama Tripathi and Ms. Anjali Goel of Team Anupama Tripathi & Associates, aiming to provide knowledge and insight on the subject.