WHAT IS TRADEMARK OPPOSITION?
A trademark may be registered in India under the Trademarks Act, 1999. To register a trademark, the owner must submit an application to the Registrar of Trademarks (the “Registrar”). The Registrar will publish a trademark advertisement in the trademark journal following receipt of the registration application. Anyone may submit an opposition to the trademark registration that has been published in the Trademark Journal. The trademark registration application is filed with the Registry of Trademarks, where the opposition is to be filed. The trademark registry will hold a hearing to reach a decision if it receives any opposition to the trademark. The trademark opposition process is outlined in the Trademark Act of 1999 and the Trade Marks Rules of 2017.
After the registrar has accepted the trademark application on the basis of distinctiveness and published the third-party opposition’s trademark in the journal, trademark opposition in India occurs at a later stage.
Getting Trademark Opposition Started-
According to Section 21 of the Trademarks Act of 1999, anyone may submit a notice of opposition to the Registrar. This covers organisations, people, trusts, and partnership businesses. So, any third party that feels aggrieved can object to the registration of a trademark.
In accordance with Section 21 of the Trademark Act, “any person” may object to a trademark, regardless of whether they have a personal or business stake in the issue. A trademark can be contested by a client, member of the public, rival business, or any other individual. Additionally, the party opposing the registration must have previously had a registered trademark. Both parties must decide whether the trademark should be abandoned or registered after a trademark opposition is filed. Anyone who thinks that the public may become confused by the published mark may submit an opposition, and the trademark registrant is responsible for protecting the mark.
There are no explicit grounds for resistance specified in Indian trademark law. The following list includes a number of grounds for resistance to a trademark opposition:
How to File an Opposition Notice to a Trademark Opposition
Any person may submit a notice of opposition to a trademark that appears in the trademark journal within four months of the first date of appearance. It must be submitted on Trademark in the prescribed form using the required format and fees.
Following the filing of the trademark opposition notice with the registrar, the trademark registrar would serve a copy of the notice to the trademark applicant. After receiving the opposition notifications, the trademark applicant has two months to submit a counter statement.
If the trademark applicant doesn’t submit the counter statement within the allotted period, the trademark application would be deemed “abandoned.” Understanding the status of trademark registration is crucial, though.
The registrar will notify both parties of the hearing date, which must be at least one month from the date of the first notice, when the evidence filing stage is complete. The objection notice, the filing of the counterstatement, and the offered evidence form the basis for the hearing. If any of the parties do not show up for the hearing, the registrar will rule against them. The registrar hears the matter.
Following a review of the information presented and a hearing in which all parties participated, the registrar determines whether or not the opposition was successful and whether or not the trademark should be registered. A party may, though, challenge the registrar’s choice to the Intellectual Property Appellate Board if they are not happy with it.
Time Limit for Opposition to a Trademark
For three months following the trademark advertisement in the Trade Marks Journal, anyone may dispute the trademark registration (which may be extended by a period not exceeding one month). The Trademark Registrar’s office is the sole location where trademark opposition filings can be made; they cannot be sent directly to a court or the Appellate Board (IPAB).
The trademark registration will be denied if a trademark objection is successful. If the trademark opposition application is denied, the brand will be registered.
Opposition to a trademark filing
DIFFERENCE BETWEEN TRADEMARK OBJECTION AND TRADEMARK OPPOSITION
|S.NO.||TRADEMARK OBJECTION||TRADEMARK OPPOSITION|
|1||Issued by trademark authorities||Filed by 3rd party|
|2||For a reply to trademark objection, no government fees are there unless specifically levied.||For filing replies separate government fees needs to be paid|
|3||Reply needs to be submitted within 1 month from the date of objection||Reply needs to be given within 3 months (May be extended with maximum 1 month)|
|4||In absence of reply, a trademark can be abandoned.||In absence of reply, trademark can be abandoned|
|5||If removed or abandoned -it can be appealed.||If removed or abandoned -it can be appealed.|
The trademark will be registered and the trademark registration certificate will be issued if the Registrar rules in the applicant’s favour. The trademark registration application will be refused if the Registrar rules in the opposing party’s favour.
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Disclaimer: The information presented here is only meant to be informative. Although this article was carefully crafted, it should only be regarded as general advice because it has been expressed in general terms. You should not act on the information provided in this article or refrain from acting upon it without first seeking professional advice since it cannot be relied upon to address your unique situation