Opposing a trademark is not a tedious work; in fact, anyone with legit claims can oppose a trademark. Once a trademark is under the application process, an individual or a company can file application to oppose the trademark even if he has no personal or professional interests associated with the claim. Since anyone can object to a trademark without having any personal or professional interest, the claimers bona fides is out of equation in such cases.
Reasons for opposing a trademark
The Indian Trademark Law does not cite specific reasons to oppose a trademark and hence it can vary from cases to cases. However, the common practice is to object to a trademark on various grounds like absolute grounds, relative grounds, and prohibited mark.
A trademark can only be objected within four months of its advertisement or re-advertisement in the trademark journal. The notice has to be filed along with substantial evidence in support of the application. In fact, sections 9 and 11 of the act ascribe that the application can be rejected on absolute or relative grounds.
Itís mandatory to file Form TM-5 to oppose a trademark. The fee charged for filing the opposition is 2500 Indian rupees. The form must contain some specific details like: application no., goods and services for the trademark application, and name of the applicant whose trademark is sought to be opposed
There are further details which need to be mentioned like:
- If the applicant filing the opposition is the owner of an earlier mark, he must include his name and address and also provide indications that he owned the trade mark previously.
- If the applicant is the license holder of the trademark, he must include the name and address of the trademark license along with an indication that he had been authorized to oppose it.
- If the application is the successor of the mar, in cases where the trademark is to be objected by the successor of it, he shall include the name and address of the successor and an indication of the date on which the application for the new proprietor was filed in the appropriate office.
- If the opponent is a foreign party, if the opposition is filed by some company or individual beyond the confines of the Indian state, name and the services provided by the company in India.
The notice of the opposition must be signed by the individual who is opposing it or by someone who has a complete know how of the facts of the case. The person signing should refer to the number of paragraphs of the notice along with the date and place where the notice is signed.
Within two months from the date of receipt of opposition, the registrar shall produce a copy of the notice of opposition to the applicant whose mark has been opposed.
After having received the copy, the applicant of the opposed mark shall produce counter statement within two months. This counter statement has to be evidenced with proper proofs on substantial grounds.
In case of the applicant failing to provide a counter statement within the stipulated time, the trademark shall be deemed abandoned.
After hearing the arguments of both parties and going through evidences, the registrar decides whether the trademark will be accepted or not. However, registrarís decision is not final and can very well be challenged by the party at the receiving end of the verdict by filing an appeal before the Intellectual Property Appellate Board.