Trademark Opposition

Trademark Opposition

Trademark opposition in India comes at a stage after the registrar has approved the trademark application on the grounds of distinctiveness and published the third-party opposition’s trademark in the journal.

Eligibility

According to Section 21 of the Trademark Act, ‘any person’ can oppose a trademark, irrespective of their commercial or personal interest in the matter.

A trademark can be countered by filed by a customer, member of the public or competitor, or any other person. Also, the person filing the trademark opposition needs to be a prior registered trademark owner.

After a trademark opposition is filed, both parties need to conclude whether the trademark should be abandoned or registered

Anyone who believes that the published mark might create confusion among the public can file for the opposition while defending the trademark lies in the trademark registrant’s hands.

Grounds For Trademark Opposition

The Indian trademark law does not provide any specific grounds of opposition. There are various reasons a trademark opposition may be opposed mentioned below:

  • The trademark is similar or identical to an earlier or existing registered trademark.
  • The trademark is devoid of distinctive character.
  • The trademark is descriptive.
  • The trademark registration application is made with bad faith.
  • The trademark is customary in the current language and or in the established practices of a business.
  • The trademark is likely to deceive the public or cause confusion.
  • The trademark is contrary to the law or prevented by law.
  • The trademark is prohibited under the Emblem and Names Act, 1950.
  • The trademark contains matters that are likely to hurt any class or section of people’s religious feelings.

Procedure for Trademark Opposition

Opposition Notice

Within four months of the first date of appearance, any person may file a notice of opposition to a trademark that appears in the trademark journal.

It must be filed on Trademark Form 5 in the prescribed format and with the applicable fees.

Counter-Statement

The trademark registrar would serve a copy of the trademark opposition notice to the trademark applicant after the trademark opposition notice was filed with the registrar. The trademark applicant must file the counter statement within two months of receiving the opposition notices.

The trademark application will be “abandoned” if the trademark applicant fails to file the counter statement within the specified time frame. However, it is necessary to understand the status of trademark registration.

Hearing

After the evidence filing stage, the registrar shall send notices to both parties stating the date of hearing, which shall be at least one month after the date of the first notice. The hearing is based on the opposition notice, counter-statement filing, and evidence submitted. The registrar hears the case, and if any of the parties fails to appear for the hearing, the registrar will rule against them.

Appeals

The registrar decides whether the opposition was successful based on a review of the evidence submitted and a hearing of both parties, and thus whether the trademark should be registered or not. However, a party who is dissatisfied with the registrar’s decision may appeal it to the Intellectual Property Appellate Board.

Time Limit for Trademark Opposition

After the trademark advertisement in the Trade Marks Journal, any person can oppose the trademark registration for three months (which may be extended by a period not exceeding one month). Trademark opposition filings can only be done at the Trademark Registrar’s office and cannot be taken to a Court or the Appellate Board directly (IPAB).

If a trademark opposition is successful, the trademark’s registration will be rejected. The brand will be registered if the trademark opposition application is rejected.

Filing Trademark Opposition

    • Details of the trademark application against which the opposition is entered

The application number against which opposition is entered along with an indication of the goods or services listed in the trade mark application against which opposition is entered and the name of the applicant for the trade mark.

    • Details of earlier mark or the earlier right on which the opposition is based

If the opposition is on account of an existing trademark application or registered trademark, then application number or registration number of the earlier mark. If the opposition is based on an mark which is alleged to be a well known trade mark, then an indication to that effect in which country or territory the earlier mark is recognized to be well known.

    • Details of the opposing party

If the opposition is entered by the proprietor of an earlier mark or of the earlier right, his name and address and an indication that he is the proprietor of such mark or right. If the opposition is entered by the successor in title to the registered proprietor of a trade mark who has not yet been registered as new proprietor, the name and address of the opposing party and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office. If the opposing party has no place of business in India, the name of the opponents and his address for service in India.

  • Grounds on which the opposition is based

Form TM-5

For opposing a trademark Form, TM-5 must be filed by the opponent. As per the application, the opposition of the trademark must be filed in the appropriate trademark office. The TM-5 form must contain the following details:

Details about the trademark application

  • Impugned application number
  • Indication of the goods or services from the trademark application
  • The name of the applicant for the trademark sought to be opposed.

Details about the opposing party

    • If the opposition is filed by the trademark owner of an earlier mark

Name and address of the trademark owner and an indication that he is the trademark owner of such trademark.

    • If a trademark licensee files the opposition

Name and address of the trademark licensee along with an indication that he or she has been authorized to enter the opposition.

    • If a successor files the opposition to the registered trademark owner

Name and address of the successor and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office or where this information is not available, was sent to the appropriate office.

    • If a party outside India files the opposition

Name and address the opposing party and address India’s service

The trademark opponent or an authorized person who is acquainted with the case’s facts should sign the notice of the opposition.

Difference between Trademark Objection and Trademark Opposition

People often get confused between trademark objection and trademark opposition. We have a table to explain the fundamental difference between the trademark objection and trademark opposition.

Trademark Objection Trademark Opposition
A Trademark Examiner issues trademark objection. A trademark gets opposition from a third party.
One does not need to pay fees. Fees are required to be submitted along with the reply to the opposition.
A reply should be submitted within one month. A reply should be submitted within three months(which may exceed not more than one month)
Trademark objection is a part of the registration process. A trademark opposition is a different process.
If there is no response from the applicant, it leads to the removal of the trademark. Similar is the case with trademark opposition; no response will lead to the removal of the trademark.
An appeal can be made after the rejection. An appeal can be made after the judgment is passed.