In India every day, thousands of Trademarks Application are filed and it cannot be said that one of such trademark do not infringe or having similarity to your trademark. Therefore, one of key step to safeguard and protect your trademark is to Oppose such Similar or identical trademark and in this way the Trademark Opposition is a noteworthy step in the process of trademark registration in India.
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When can an Opposition be filed?
During the process of Trade mark registration, the Trademark Opposition is instituted when any Trademark is accepted by the Trademark Department and thereafter advertised in the Trademark Journal. After the preliminary requirements and acceptance of the distinctive character, the trademark has been advertised in the Trademark Journal and comes into public domain for 4 months for the opposition by any Third Party. The primary objective is to give the pubic an opportunity to raise opposition against the registration of Trademark if it is identical or deceptively similar to his own brand or existing trademark.
Who can file Opposition to Trademark?
Section 21 of Trademark Act, 1999 read with Rule 42 of Trademark Rules, 2017, any person can oppose the registration of a mark advertised or re-advertised in the Trademark Journal within 4 months of form date of publication of Trademark Journal by filing a notice of opposition with the Registry in Form TM-O.
Ground of Opposition to Trademark:-
The Trademark opposition may be filed on the following grounds:-
1. The trade mark is not distinctive or also not capable of distinguishing the goods/services of the Applicant from those of others/opponent; [Section 9 – Absolute Grounds for refusal of registration],
2. The trademark is visually, structurally, phonetically and deceptively or identical similar to the opponent’s trademark; [Section 11-Relative Grounds for refusal of registration]
3. The Trademark contains the word of any chemical element or compound or international non-proprietary names; [Section 13]
4. If the Opponent is unregistered prior user of such trademark.
Contents of Notice of Opposition to Trademark:-
Rule 43 of Trademark Rules, 2017 prescribes that the Notice of Opposition shall Contain:-
1. The Application Number of Trademark against which the Opposition is filed;
2. The name of Applicant;
3. If the Opposition is based on earlier registered Trademark, the particulars of such Trademark(s) and its status;
4. If the Opposition is based on prior user then the date of priority use of such trademark;
5. The Grounds on which Opposition is based;
6. It must be verified at the foot by the Opponent specifically by reference to numbered para which are based on personal or information received
7. The date and place and signature of Opponent where such Notice has been verified.
Procedure of Trademark Opposition Proceeding:-
The following stages are involved in the Trademark Opposition proceeding:
1. Notice of Opposition: The Opponent shall file a Notice of Opposition in Form TM-O along with statutory fee of Rs. 2,700/- (online) or Rs. 3,000/- (Offline). Thereafter TM Registrar shall serve a copy of the notice of opposition to the Applicant of the Trade mark within three months from the date of receipt of the Notice of Opposition. [Rule 42]
2. Counter Statement: The Applicant of trademark shall file the Counter-statement within 2 months of the receipt of the notice of opposition from the Registrar. The copy of Counter Statement shall ordinarily be served by the Registrar to the Opponent within 2 months of from the date of receipt of such Counter Statement. If the Counter Statement is not filed within 2 months, the Applicant is deemed to have abandoned the Trademark application. [Rule 44]
3. Evidence in Support of Opposition: Within 2 months from service of Copy of Counter-statement, the Opponent must file evidence in support of the Opposition by way of an Affidavit. The Opponent also has an option to write to the Registrar stating that he does not desire to file evidence but instead intends to rely on the facts stated in the Notice of Opposition. If the Opponent take no action, the Opposition is deemed to have been abandoned. [Rule 45]
4. Evidence in Support of Application: Within 2 months from service of Copy of Evidence in support of Opposition, the Applicant must file evidence in support of the Application by way of an Affidavit and deliver to the opponent copies thereof. The Applicant also has an option to write to the Registrar stating that he does not desire to file evidence but instead intends to rely on the facts stated in the counter-statement. If the Applicant take no action, the Application is deemed to have been abandoned. [Rule 46]
5. Evidence in reply: Within 1 month thereof, the Opponent may leave with registrar file Evidence by affidavit in reply to the Applicant’s evidence and deliver the copy of such affidavit to the Applicant. [Rule 47]
6. Hearing: After Closure of Evidence, the Registrar shall schedule the hearing and shall serve the notice of First hearing to both the parties to place their respective arguments and after hearing both the parties, the Registrar shall decide whether the Trade mark is to be accepted for registration or not and communicate his decision in writing to both the parties.
The decision of the Registrar made in the opposition proceedings can be challenged by an aggrieved person by filing an appeal before the Intellectual Property Appellate Board(IPBA) within 90 days from the date of such decision.
In this way, Trademark opposition proceeding is a comprehensive legal diaspora of legal objections to the registration of trademark on prescribed grounds by common Person. It is not necessarily be required to be filed only by any registered proprietor of the mark but also it could be any person in the public whose trademark is being copied.
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{The author i.e., Narendra Mohan is a Practicing Lawyer and can be reached at (E) narendra4legal@gmail.com and (M) 9717998362}
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