A company or individual applies for trademark registration to protect their brand from unauthorized use. However, situations may arise where a trademark owner finds that someone else has filed an application with the Trade Marks Registry to register a similar trademark and that the same has been published in the Trademark Journal. In such cases, the trademark owner can file a trademark opposition within 4 months of publication of mark in Trademark Journal.
People file trademark oppositions primarily to prevent competitors from registering marks that could confuse consumers, dilute the value of an existing brand or infringe upon established intellectual property rights. However, trademark opposition is not limited to such situations. The law permits opposition on several other grounds as well. Additionally, there is no requirement that the opponent must be the proprietor of a registered trademark.
Any person having a legitimate interest in the matter can also file an opposition against the registration of a trademark. Some of the common grounds for trademark opposition are discussed in this blog post. We have also discussed the trademark opposition filing procedure.
Trademark opposition is a legal procedure through which a person seeks to prevent registration of a trademark application that has been published in Trademark Journal. It provides an opportunity to challenge the registration of a trademark before it is granted by the Trade Marks Registry. In India, u/s 21 of Trade Marks Act, 1999, it is provided that any person may file a notice of opposition against a trademark application within 4 months from the date on which the mark is advertised or re-advertised in the Trademark Journal.
Two or more persons may also be joined as opponents in the same notice of opposition if the grounds of opposition are substantially the same. The term "person" includes individuals, companies, trusts and partnership firms. The opponent may own a registered trademark or have a commercial interest in the matter but neither is actually a prerequisite for filing an opposition. The notice of opposition may be filed along with supporting evidence.
Alternatively, the opponent may inform the Registrar that they intend to rely solely on notice of opposition without filing evidence at that stage. After the applicant files a counter statement, both parties are given an opportunity so they can submit their evidence in support of their respective claims. Thereafter, the Registrar may fix the matter for hearing before deciding whether the trademark should proceed to registration or not.
A trademark opposition can be filed on various grounds. Below, we have stated some of the most common grounds for opposition of a trademark application:
A person/business may file an opposition against a trademark if they believe that it is identical or deceptively similar to an existing registered trademark.
Opposition can also be filed by a third party if the mark is descriptive in nature, lacks any distinctive character or has become customary in the current language or established trade practices.
Further, a trademark application may be opposed by someone if they believe it has been filed in bad faith, is prohibited by law or is contrary to any legal provisions.
A trademark that is likely to cause confusion or deceive the public can also be opposed.
In addition, opposition may be filed if the mark contains matters likely to hurt the religious feelings of any section of the public or if it is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
The trademark opposition procedure involves the following steps:
Filing the notice: You will first have to file a notice of opposition using Form TM-O. This form is the prescribed form for TM opposition. You must submit this form to Registrar of Trade Marks along with prescribed filing fee. The Registrar will serve a copy of the notice to the applicant whose trademark has been opposed.
Waiting for counter-statement: Within 2 months of receiving notice of opposition, the applicant must file a counter-statement promptly. A copy of counter-statement will then be served on opponent. The counter-statement sets out grounds on which applicant seeks registration of trademark. If the applicant fails to file a counter-statement within prescribed period, trademark application is deemed abandoned.
Filing evidence: After receiving counter-statement, the opponent must file evidence so as to support the opposition or inform Registrar that they intend to rely on facts stated in notice of opposition. The applicant of the trademark is then given an opportunity to file evidence in support of their application. Thereafter, the opponent may file evidence strictly in reply to applicant's evidence.
Final hearing of trademark: After completion of evidence stage, the Registrar may move ahead and fix the matter for a hearing. Both parties are given an opportunity by the Registrar to present their arguments. Based on pleadings, evidence and submissions made by the parties, the Registrar issues a final order to decide whether trademark application should proceed to registration or not.
Appeal: Any person aggrieved by Registrar's decision may file an appeal before the appropriate High Court in accordance with applicable provisions of law.
Also Read: Importance of Trademark Registration for Startups
Trademark opposition in India is an important legal process that helps businesses to protect their trademark. It gives people an opportunity to oppose the registration of a trademark if they believe the same would negatively affect their rights or cause confusion in market or for some other legally valid reason. By understanding the common grounds and the legal procedure for trademark opposition, you can better protect your trademark rights.
Since the process tends to be a bit complicated, it is advisable to seek help regarding this process from an experienced trademark consultant. Therefore, you can contact Registrationwala for assistance with trademark registration or trademark opposition matters.
Q1. What is trademark opposition?
A. Trademark opposition definition can be explained as a legal process whereby a third party opposes the registration of a trademark published in the Trademark Journal.
Q2. Who can file a trademark opposition in India?
A. Any person, business, trust or partnership firm can file a trademark opposition against a TM registration application if they believe that the mark should not be registered. It is done on grounds like similarity to an existing trademark, lack of distinctiveness, bad faith or any other reason that is legally valid.
Q3. What is the time limit to file a trademark opposition?
A. The time limit to file this notice is within 4 months from the date the mark gets published in Trademark Journal.
Q4. What happens if the applicant does not respond to opposition raised by a third party in a timely manner?
A. If the applicant fails to file a counter-statement against opposition raised by a third party in a timely manner, the trademark application gets marked as abandoned.
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