Counter reply to Opposition of Trademark Application

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.

GUIDELINES FOR REGISTRATION OF TRADEMARKS 

The basic guidelines to register a trademark under the Act are:

• The selected mark should be capable of being represented graphically.
• 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.

COUNTER STATEMENT TO OPPOSITION OF TRADEMARK APPLICATION

Within four months from the date of publication “any person” can file an opposition and in such cases the opposition proceeding is conducted at respective office of the Trade Marks Registry.

Under opposition proceeding, a copy of the notice of opposition is served to the applicant who is required to file a counter-statement within two months failing which the application is treated as abandoned. The copy of the counter-statement is served to the opponent, who leads evidence in support of his case by way of affidavit, then the applicant leads evidence. After that the opponent files evidence by way of rebuttal. On completion of evidence, the matter is set down for a hearing and the case is decided by a Hearing officer.

The Registrar shall then serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar, in the prescribed manner a counter statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application

The registrar’s decision is appealable to the Intellectual Property Appellate Board. 

LIMITATION PERIOD FOR SUCH OPPOSITION: – 

Within two months from receipt by the applicant of copy of the notice of opposition from the Registrar. 

POINTS TO KEEP IN MIND WHILE DRAFTING OF COUNTER STATEMENT: –

• Applicant should read the Notice of Opposition thoroughly.
• Every allegation in the Notice of Opposition shall be rebutted accordingly.
• Every statement in support of the Application shall be presented with Evidence.
• All the documents presented in support of the applicant shall be valid and legal thereby allowing it to be presented in case of any proceeding in future.
• Counter Statement should mention facts as to how the applicant’s mark is different than that of the Opposition.

FEES: – 

1. TM-A: – Application for registration of Trademark.

• In case of individual: – Rs. 5000 for Physical filing and Rs. 4500 for online filing.
• In other Cases: – Rs. 10,000 for Physical filing and Rs.9000 for online.

2. TM-O: – Notice of Opposition or Counter Statement

• 3000 for physical filing and Rs. 2700 for online filing.

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