Procedure for Trademark Opposition in India
Procedure for Trademark Opposition in India
Trademark is generally words, phrases, logos and symbols used by a producer or service provider to identify their goods. or service. The process for trademark registration is lengthy and includes advertisement of the mark in the Trademark Journal. During the trademark advertisement or re-advertisement of an application for registration, any person may initiate trademark opposition proceedings under the Trademark Act of India. If a trademark opposition is raised, the opposing party will have the option to be heard and the trademark application will have the option to also be heard and respond to the opposition. In this article, we look at the procedure for trademark opposition in India.
Grounds for Trademark Opposition
A trademark opposition can be raised on various ground by any person. The following are some of the grounds for trademark opposition in India:
- The trademark is similar or identical to an earlier or existing registered trademark.
- The trademark is devoid of distinctive character.
- The trademark is descriptive in nature.
- The trademark registration application is made with bad faith.
- The trademark is customary in the currently 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 religious feelings of any class or section of people.
Procedure for initiating Trademark Opposition
To initiate trademark opposition proceedings, a notice of trademark opposition can be filed by any person within four months of date of advertisement or re-advertisement of the application in the Trademark Journal. The trademark opposition must be on Trademark Form 5 in the prescribed manner and filed with applicable fees. The trademark opposition notice should contain the following information:
- Application against which trademark opposition is entered including trademark registration application number, class of good or services for which trademark registration application was made and the name of applicant of the trademark application.
- Details of the trademark opposition party including name and address.
- The grounds for trademark opposition.
Trademark Opposition Procedure
Once the trademark opposition notice is filed with the Trademark Registrar, the Registrar shall serve a copy of the trademark opposition notice to the trademark applicant. Within two months of receipt of the trademark opposition notice, the trademark applicant must file a counter statement. If the trademark applicant fails to file the counter statement within the prescribed period, the trademark application shall be deemed to have been “abandoned”. To know more about trademark application status, refer to “Understanding Trademark Registration Status“.
Based on the trademark opposition filed and the counter-statement filed, the Registrar may call for hearing of the parties. The Registrar then has the option to rule on the trademark registration application and trademark opposition filing based on the evidences presented.
Trademark Registration
If the Registrar decides in favour of the trademark applicant, the trademark shall be registered and trademark registration certificate issued. If the Registrar decides in favour of the opposing party, then the trademark registration application shall be considered to be rejected. Both the trademark applicant and opposing party have the option to be heard by the Intellectual Property Appellate Tribunal, if necessary. For trademark registration in India, visit IndiaFilings.com.
