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.
Any person can oppose a trademark application filed by an applicant for various reasons during the trademark application stage.
According to Section 21 of the Trademark Act, 'any person' can oppose a trademark, irrespective of his 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. However, there is no restriction on filing an opposition. 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.
Any person can file a notice of opposition on a trademark that appears on the trademark journal within four months from the first date of appearance.
It must be filed on Trademark Form 5 in the prescribed manner and filed with applicable fees.
After the trademark opposition notice is filed with the trademark registrar, the registrar would serve a copy of the trademark opposition notice to the trademark applicant. Within two months of receipt of the trademark, opposition notices the trademark applicant must file the counter statement.
If the trademark applicant fails to file the counter statement within the specified period, the trademark application shall be "abandoned." However, it is necessary to understand the trademark registration status.
After the evidence filing stage is over, 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 notice of opposition, the counter-statement filing, and the filed evidence. The registrar hears the matter by the registrar, and if any of the parties does not show up for the hearing, the registrar will rule against him.
Based on the review of the evidence submitted and the hearing of both the parties, the registrar decides whether the opposition was successful at doing so and, in turn, determines whether the trademark should be registered or not. However, the party aggrieved by the registrar's decision may challenge the same by filing an appeal before the Intellectual property Appellate Board.
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 be done only at the Trademark Registrars' office and cannot be taken directly to a Court or the Appellate Board (IPAB).
If a trademark opposition is successful, the registration of the trademark will be refused. If the trademark opposition application is rejected, the brand will be registered.
A trademark opposition can be raised under different sections like the absolute grounds, relative grounds, prohibited mark, or even concerning the opposed trademark's proprietorship.
The Indian trademark law does not provide any specific grounds of opposition. There are various reasons a trademark opposition may be opposed mentioned below:
Trademark objection and opposition are two different processes. Still, people often get confused between the same Here in this table; we have tried 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 Trademark 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.|
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Drafting and filing of opposition notice. Exclusive pricing for trademark applications filed by IndiaFilings. Inclusive of government fee and service tax.
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Drafting and filing of opposition notice. For trademark applications NOT filed by IndiaFilings. Inclusive of government fee and service tax.
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Drafting and filing of opposition notice with written notice to the other trademark applicant. Inclusive of government fee and service tax.
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:
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.
An individual who thinks that his or her brand name or the reputation of the company will be damaged by the registration of a mark can raise a trademark opposition.
The Opposition notice can be filed within three months and can be extended by one month from the date which the trademark was published in the trademark journal.
In case the trademark opposition is filed after three months but before four months expiry period the notice of opposition should be accompanied by a request for extension by providing a sufficient reason for the delay in the same.
Anyone can file for trademark opposition, but usually, an opposition is raised by a person who is the owner of the trademark or a mark that deals with similar goods and services.
A trademark opposition can be raised even if the trademark application is pending or already in use. The common law of rights prevents any person from selling goods and services.
Generally, a power of attorney is to be submitted at the time of filing the opposition notice. If the POA is not available it can be filed later on too.
The opposition notice should be filed at the trademark registry where conflicting mark application has been filed.
Last updated: June 30, 2021