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Opposition to Registration Of Trademark Under Trademark Act, 1999 along with Trademark Rules, 2017

1. Notice of Opposition to Registration Of Trademark

Pursuant to section 21(1) read with rule 42, any person may within 4 months from the date of the advertisement or re-advertisement of Trade Mark Application (the date of publication of the trademark Journal in which the application for registration of the trademark was advertised or re-advertised), give notice in writing in FORM TM-O with such particulars as specified in Rule 43 with Govt. Fees of Rs. 3000/-(for e-filing Rs. 2700/-) to the Registrar.

Further, a copy of notice of opposition shall be ordinarily served by the Registrar to the applicants within 3 months of the receipt of the same by the appropriate office.

Where a notice of opposition has been filed in respect of a single application for the registration of a trademark for different classes of goods and services, it shall bear the fee in respect of each class in relation to which the opposition is filed.

Where an opposition is filed only for a particular class or classes in respect of a single application made under sub-section (2) of section 18, the application for remaining class or classes shall not proceed to registration until a request in Form TM-M for division of the application together with the divisional fee is made by the applicant.

Where in respect of a single application for the registration of a trademark no notice of opposition is filed in a class or classes, the application in respect of such class or classes shall, subject to section 19 and sub-section (1) of section 23, proceed to registration after the division of the application in the class or classes in respect of which an opposition is pending.

Moreover, where the applicants has already filed the counter statement on the basis of the copy of notice of opposition made available in the electronic records on the official website, the requirement of service of copy of the notice of opposition to the applicant shall be dispensed with.

2. Counter Statements in form TM-O

Pursuant to section 21(2) read with rule 44, Applicant shall file the counter statements in form TM-O within two months from the receipt by the Applicant of notice of opposition from the Registrar and shall set out what facts, if any, alleged in the notice of opposition, are admitted by the Applicant. A copy of the counter statement shall be ordinarily served by the Registrar to the opponent within two months from the date of receipt of the same. Moreover, counterstatement shall be verified in the manner as provided in sub-rules (2), (3) and (4) of rule 43.

3. Evidence In Support Of Opposition to Registration Of Trademark By Opponent

Pursuant to Rule 45, within two months from the receipt of a copy of the counter statement, the opponent shall either file with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition.

Further, he shall deliver to the applicant copies of any evidence including exhibits, if any, that he filed with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery or If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.

4. Evidence In Support Of Counter Statement By Applicant:

Pursuant to rule 46, within two months on the receipt by the applicant of the copies of affidavits in support of opposition or of the intimation that the opponent does not desire to adduce any evidence in support of his opposition, the applicant shall file with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and,

He shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any evidence but intends to rely on the facts stated in the counter statement and or on the evidence already left by him in connection with the application in question.

In case the applicant adduces any evidence or relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies of the same, including exhibits, if any, and shall intimate the Registrar in writing of such delivery or If an applicant takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his application.

5. Evidence In Reply By Opponent:

Pursuant to rule 47, within one month from the receipt by the opponent of the copies of the applicant’s affidavit, the opponent may file with the Registrar evidence by affidavit in reply and shall deliver to the applicant copies of the same including exhibits, if any, and shall intimate the Registrar in writing of such delivery.

6. Further Evidence:

Pursuant to rule 48, No further evidence shall be left on either side, but in any proceedings before the Registrar, he may at any time, if he thinks fit, give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit.

 7. Translation Of Documents:

Pursuant to rule 49, where a document is in a language other than Hindi or English and is referred to in the notice of opposition, counter statement or an affidavit filed in an opposition proceeding, an attested translation thereof in Hindi or English shall be submitted before the registrar and a copy thereof shall be provided to opposite party.

8. Hearing And Decision:

Pursuant to rule 50, The Registrar, after the closure of the evidence, shall give notice to the parties of the first date of hearing. The date of hearing shall be for a date at least one month after the date of the first notice.

Further, a party to a proceeding may make a request for adjournment of the hearing with reasonable cause in Form TM-M accompanied by the prescribed fee, at least three days before the date of hearing and the Registrar, if he thinks fit to do so, and upon such terms as he may direct, may adjourn the hearing and intimate the parties accordingly.

“Provided that no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days.”

If the applicant or opponent is not present at the adjourned date of hearing and at the time mentioned in the notice, the application may be treated as abandoned or the opposition may be dismissed for want of prosecution and the application may proceed to registration subject to section.

The Registrar shall consider written arguments if submitted by a party to the proceeding. The decision of the Registrar shall be communicated to the parties in writing at the address given for service.

9. Security For Costs:

Pursuant to rule 51, The security for costs which the Registrar may require under sub- section (6) of section 21 may be fixed at any amount which he may consider proper, and such amount may be further enhanced by him at any stage in the opposition proceedings.

(Author can be reached at varsha.aggarwal0@gmail.com or at Ph: 9971647458)

 Disclaimer: The entire contents of this article are solely for information purpose and have been prepared on the basis of relevant provisions and as per the information existing at the time of the preparation. It doesn’t constitute professional advice or a formal recommendation. The author has undertaken utmost care to disseminate the true and correct view and doesn’t accept liability for any errors or omissions. You are kindly requested to verify & confirm the updates from the genuine sources before acting on any of the information’s provided herein above.

Categories: Corporate Law
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