Trademark Opposition and Timelines for Trademark opposition in India
Trademark Opposition and Timelines for Trademark opposition in India
A trademark opposition is an administrative proceeding that happens before the Trademark Registrar. Here one party is seeking to prevent another from registering a Trademark. Indian Trademark law is based on common law principles. The Indian Trademark law provides enough checks and securities to maintain the uniqueness of the registered marks in the registry and also to protect the creator’s rights from infringement. Trademark Act of 1999 provides three-security for Trademark registration. At first, the official checks the mark and assesses the uniqueness and will only approve if he does not find a similar trademark already registered in the existing database of the registry. In case if he fails to check it properly then the mark will be published in the Trademark journal which is published from time to time every week and can also be viewed on www.India.nic.in/journal-to-Html. which is the official website of the Registrar of Trademarks. One can file an opposition against subject trademark stating their objections as they are provided under Section 21 of the Trademark Act,1999.
Generally, a time limit of three months is allowed for initiating the trademark opposition proceeding after it appears on the journal for the first time but that can be extended to a maximum of four months. Once opposed the trademark application status will reflect as opposed and the Registrar is open to taking evidence as well as hearing the party’s side and making a decision further. Thirdly once the trademark appears on the journal and it remains unopposed for four months then the trademark gets registered and after that one can initiate the rectification proceeding to cancel or vary the registration.
What are the stages for trademark opposition proceeding?
Step 1 Filing an opposition Notice/ Filing a Counter statement: A person wanting to oppose a mark can file an opposition notice on the prescribed form with the fees. This has to be done within four months of advertisement of the mark. After sending it to the registry for review and if all the formalities are met the Registry will then serve the notice on the other party. The reply or counter-statement to this opposition must be filed within two months. There is no extension to file the counter-statement which means that if the Trademark Applicant is failing to file the counter statement within two months of receiving the notice then the mark shall be deemed as abandoned. The counter-statement is first sent to the Registry for review and if all the formalities are met then the registry will then serve the counter-statement to the opponent.
Step 2 Evidence filing in support of opposition: Within two months of receiving the counter statement notice the opponent has to choose to provide evidence to support his opposition as an affidavit to strengthen the case. The opponent can choose not to file the Affidavit if he is wanting to rely on the facts that are stated in the notice of opposition. The opponent here is required to inform the officials and another party within the specified time or else the wise opposition will be tagged as abandoned.
Step 3 Evidence filing to support the Counter statement: Within two months of receiving the evidence the applicant has to file evidence to support the counter statement. The applicant can also waive his right to submit any evidence.
Step 4 Evidence Filing in Reply: Within one month of receiving evidence/waiver the opponent has the option to file the additional evidence in support of his opposition. This option is given to achieve closure with the proceedings to rebut the evidence by the applicant.
Hearing: Generally, with three months of the completion of evidence, a hearing is scheduled where both parties are notified. Once the hearing is done the evidence submitted by the parties is considered and the Registrar shall decide whether the trademark should be accepted or not.
