What is trademark opposition, and how does it work?
An objection submitted by a third party against the registration of a trademark that has been accepted and published in the Trademark Journal is known as a trademark opposition. Any interested party has four months from the date of publication of the trademark advertisement in the trademark journal to file an opposition.
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When a trademark is challenged, what happens next?
The trademark registrar would serve a copy of the trademark notice of opposition to the trademark applicant after the trademark notice of opposition was filed with the registrar. The trademark applicant must file the counter statement within two months of receiving the notice of opposition.
In India, who can oppose a trademark application?
Any person may oppose the registration of a trademark published in the Journal by filing a notice of opposition with the Registry in the prescribed way and with the required fee, according to the Trade Marks Act of 1999. Any individual can file a notice of opposition against a trademark under the Act, and the Opponent does not need to have an application or registration in India to do so.
When is it possible to register an opposition?
When a trademark is accepted and published in the trademarks journal, anyone can file a notice of opposition against registration of the trademark within four months of its date of publication in journal. It must be submitted in the specified manner on TM-O and with the appropriate fees. Furthermore, when the four-month period has passed, no notice of opposition can be filed and the trade mark will be registered. After that, the only option is to file a rectification against the registration.
Hearing on trademark opposition-
Following the filing of a notice of opposition, the following steps must be taken:
Within three months of receiving the notice of opposition, the Registrar shall serve a copy on the Applicant of the Trade Mark; within two months of being served of the notice of opposition, the Applicant shall file its counter statement specifying the facts alleged in the notice of opposition that the Applicant admits or rebuts. If the Applicant files a counter statement, the opposition moves on to the evidence stage.
- Within two months of receiving the counter statement, the Registrar shall serve a copy on the Opponent.
2. Within two months of receiving the counter statement, the Opponent shall file its affidavit by way of evidence in support of the opposition and serve the copy of the same on the Applicant.
3. Within two months of receiving the affidavit by way of evidence in support of the opposition, the Applicant must file its affidavit by way of evidence in favour of the application and serve the copy of the same on the Opponent.
4. The Opponent shall file its affidavit by way of evidence in reply within two months of receiving the affidavit by way of evidence in support of the application.No further evidence will be accepted from either side, unless the Registrar deems it reasonable to permit the same on or without any conditions or costs as he thinks fit.
After hearing the parties and examining the evidence, the Registrar will decide whether the Trade mark should be allowed for registration, with/without any restrictions or not. An aggrieved party can challenge the Registrar’s judgment in the opposition process by filing an appeal with the High Court.
However, it is to be kept in mind that successfully opposing a trade mark registration would only prevent the application from moving further to registration. However, in order to prevent the Applicant from using the Trade mark, the Opponent must initiate a lawsuit in a court of law for infringement/passing off.
Objection proceedings may, however, take longer than the statute allows due to a large backlog of opposition cases at the Trade Marks Registry. To address the backlog of opposition cases, the Registry has launched a number of initiatives, including the Opposition Drive, Mediation and Reconciliation Measures, and Abandonment Drive.
Documents required to file a Trademark Opposition
In order to file a Trademark Opposition, you’ll need the following documents in the course of the opposition proceedings:
Authorization Documents: In case if the proceedings are taken up on behalf of the parties by their authorized agents, the parties will need to file a signed Power of Attorney in their foavour authorizing them to deal with the opposition proceedings on their behalf.
Evidence in Support of Notice of Opposition/Counter-Statement: The evidence you must present in this case must be comprehensive. You must present all proof, regardless of how tiny it may appear; even a grain of information can be reliable during trademark opposition proceedings.
Simply stated, as an opponent, you’ll need the following documents:
- Notice of Opposition to the trademark
- Proof to back up your claim
- Agent Authorization (if any)
As a trademark registration applicant, you’ll need the following documents:
- Counter-statement to the Notice of Opposition
- Proof to back up your claim
- Agent Authorization (if any)
In the case of a trademark opposition, the procedure for adducing evidence is as follows:
A trademark application can be opposed by an opponent by submitting TM-O during the trademark publication period. In any event, the trademark applicant has the option of responding to the opposition by filing counter statement in support of the trademark application.
Evidence in support of the Opposition for a Trademark
Rule 45 of the Trademark Rules, 2017 deals with evidence in support of opposition. It states that-
Within two months of receiving a copy of the counterstatement, the opponent must either file such evidence by way of affidavit as he may desire to adduce in support of his opposition or file a letter in writing that he does not wish to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence, including exhibits, that he leaves with the Registrar under this sub-rule and shall also submit to the Registrar, the proof of service of the same to the Applicant.
Evidence in support of the Application for a Trademark
Rule 46 of the Trademark Rules, 2017 deals with evidence in support of application. It states that-
Within two months of receiving copy of affidavits in support of opposition or notification that the opponent does not wish to adduce any evidence in support of his opposition, the applicant shall file its evidence by way of affidavit as he wishes to adduce in support of his application and shall deliver to the opponent copies thereof or shall notify the Registrar and the opponent that he does not wish to adduce any evidence in support of his opposition. the applicant shall deliver copies of the affidavit to the opponent, including any exhibits, and must notify the Registrar in writing of such delivery.
Affidavits must be used to provide evidence by parties in trademark opposition proceedings. However, under exceptional circumstances, the Trademark Registrar may, at his or her discretion, allow oral evidence to be given by parties in trademark opposition proceedings.
Trademark Evidence Affidavit
The trademark evidence affidavit must be properly stamped, written in the first person, organised into sequentially numbered paragraphs, and limited to one subject. In addition, the document must include the name of the person who is making the affidavit and the name and address of the person on whose behalf the affidavit is being submitted, alongwith the authorization document, in cases where the Application/opposition is moved by an entity/organization.
Evidence that hasn’t been filed
The application or opposition is declared abandoned if the applicant or opponent fails to file any proof within the given time period. After the application or resistance is dropped, the registration process moves forward according to the facts.
Apply online for trademark opposition-
Difference between trademark objection and trademark opposition-
Immediately following the submission of a trademark registration application, a trademark objection is raised by the Registrar. During the earliest phases of registration after the trademark is accepted and published, it is opposed to.
The stage of trademark opposition follows after the stage of trademark objection.
When the trademark is accepted and published in journal, Any third party can file a trademark opposition to prevent the trademark from being registered.
In the form of a trademark examination report, the examiner files a trademark objection.
In the form of a notice of opposition, a third party registers a trademark opposition.
In the report of the Trademark examination, the examiner files a trademark objection. The trademark examination report as well as the status of the trademark can be checked online.
The third parties must submit the notice of trademark opposition with authorization, if any, and reasons for the proposed trademark opposition or how the proposed trademark would violate the opposing party’s rights if registered.
A reply must be sent to the trademark registrar by the applicant within a month of receipt of the trademark objection examination report.
A reply in form of counter statement must be sent to the registrar by the applicant within two months of receiving the notice of opposition.
An applicant can file an appeal if the trademark application is rejected after sending a reply to the trademark objection.
An appeal lies against the judgment of the registrar in the case of a trademark opposition against the trademark application. Third parties must provide evidence and justifications for the proposed trademark opposition, as well as how the proposed trademark would infringe upon the opposing party’s rights if registered.
The trademark is published in the trademark journal once it has been accepted following the completion of the trademark objection process.
When the trademark is accepted following the conclusion of the trademark opposition process, the applicant and the third party are notified of the decision.
The grounds of opposing Trademark Registration-
The aggrieved party – the one who is opposing the registration of a trademark – must establish one of the following grounds in order to file a trademark opposition notice:
- Copied Trademarks: A trademark that lacks any distinguishing features or qualities and is identical to a trademark that has been registered.
- Descriptive Trademarks: In India, if a trademark vehemently defines the product’s quality, intended purpose, or quality, it is subject to trademark opposition.
- Deceptive Trademarks: Trademarks that have certain characteristics similar to an existing brand are thought to have the potential to deceive the public. Deceptive trademarks can be challenged.
- Prohibited Trademarks: Prohibited trademarks are brand names or devices that are prohibited under the Emblem and Names Act of 1950.
- Common Trademarks: These are common words that are used in everyday life. A third party may object to such trademarks.
- Offensive Trademarks: Certain trademarks that can affect a community’s sentiment fall under brand names that can be challenged on the basis of being offensive.
Frequently Asked Questions (FAQs) - Trademark
Once the registrar will serve a copy of the trademark opposition notice to the trademark applicant, he must file a counter statement in reply within two months after receiving the opposition notice.
It is necessary to be present at the Trade mark opposition hearing either physically or through video conferencing. If the opponent fails to appear at the hearing, the opposition will be dismissed and the trademark will be registered by the Registrar. If the applicant fails to appear at the hearing, the application will be considered abandoned and refused. As a result, the parties must be present in person or via a trademark attorney or agent.
The applicant must file a counter statement or reply to the notice of opposition using Form TM-O with the prescribed fee of INR 2700 within two months of receiving the notice of opposition. Even for counter statements, the fee incurred has to be inaccordance with each class to which the counter is being filed.
The counter statement shall typically comprise the following:
- A detailed submission of the facts the Applicant relies upon in favour of his application.
- A paragraph-by-paragraph response to each of the grounds raised in the notice of opposition.
- The applicant or his duly authorised agent shall verify the counter statement at the foot by stating what he verifies of his own knowledge and what he verifies based on information received and believed to be true, referring to the numbered paragraphs of the counter statement.The person who performs the verification must sign it and mention the date and location where it was completed.
Again, the registrar shall assess the counter-statement and, if all procedures are duly followed in filing it, he may serve a copy of the same on the opponent within two months of receipt of the same.
In order to speed up opposition proceedings, the Trademark Rules 2017 have made the following changes:
- On the basis of the notice of opposition posted on the Trademark Registry’s website, the applicant can file a counter statement. The registrar waives the necessity of serving a copy of the notice of opposition to the applicant in this caseand directly serves the copy of counter statement to the opponent to speed up the process.
- The ability to request an extension to file a counterstatement has been removed.
As a result, if the applicant fails to file a counter statement within two months of the opposition being served, the trademark is regarded abandoned for non-prosecution. If the applicant files a counter statement, the opposition will move forward to the evidence stage.
Service means the delivery of a written notice to the concerned party notifying them of the various opposition proceedings stage.
Who does service in Trademark Opposition?
The Registrar serves the concerned parties, the copies of Notice of Opposition and Counter statement at the initial stage of the trademark opposition proceedings.
However, once the evidence stage starts, the Parties themselves must do the service of the evidences to the respective opposite party within the prescribed time failing which, their case is deemed to be abandoned and the Application is registered/refused accordingly.
Within four months of the date of the applied trademark’s publication in the Journal of Trademarks, one might file an opposition to its publication (Rule 42 of the Trademark Rules, 2017).
Any person who claims to be the owner of a trademark, he/she needs to submit the application mentioning the related goods and services associated with the company.
Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed indefinitely as long as the renewal fees are paid every 10 years.
‘TM’ stands for Trademark. The use of TM symbol notifies the public that the company is claiming exclusive ownership of the trademark and can generally be used by Applicant of Trademark Application. Whereas, the ® symbol, can be used only once the trademark is registered and the registration certificate is issued by Trademark Registry.
When a Notice of Opposition is filed within due time, the Registrar serves a copy of the same to the Applicant who then files a counter statement in support of his application.The Opponent has the option of producing proof in support of his opposition in the form of an Affidavit within two months of receiving the counter-statement. If the Opponent wants to rely on the facts given in the notice of opposition, he can choose to forego filing an affidavit by filing a Letter stating his intent to rely on the facts given in the notice of opposition. Whatever decision is made, the Opponent must notify the Registry and the other party within the time frame specified, or the opposition would be considered abandoned.
No opposition can be brought after the required four months of publication. The Registrar will enroll the trademark in the records and issue a trademark registration certificate if no objections are lodged within four months of the trademark being published in a trademark journal.