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Trademark Opposition Proceeding in India

Trademark Opposition Proceeding in India

Trademark opposition is an event that you most likely have to consider if the trademark is published in the journal. Once anyone opposes the trademark published, the trademark opposition proceeding in India begin.

If you have established your trademark known throughout your region through your passion and hard work, only you should be allowed to use it. However, there are times when going through the trademark journal you encounter a mark similar to your own. When that happens, you already know what the next step is trademark opposition proceeding in India. It can be quite an extensive one, for it might also require multiple hearings. Through this blog, we are going to discuss about Trademark opposition proceedings. However, let us have a quick look at the process of trademark registration.

Trademark registration process

Let us take a look at the process of trademark registration in a linear and brief way. The steps are as follows:

  1. Deciding your trademark
  2. Performing a trademark search
  3. Filing the application for trademark registration
  4. Examination of trademark application
  5. Publication of trademark
  6. Registration of trademark.

The 6 steps of trademark registration entail one particular step that makes the mark visible to the general public-step 4. It is going to become the foundation of our explanation of about trademark opposition proceeding in India.

When is the trademark opposed?

When the trademark is published in the trademark journal, it remains there for the next 4 months. These 4 months are crucial, for during this time, the mark is open for the public to see. If any among the public feel like the trademark is either:

  1. Offensive
  2. Deceptively similar or
  3. Copy

They can oppose the trademark. Most of the trademark opposition cases have been in case the trademark was either a copy or was deceptively similar. But I digress, who are these so called “people”? Let us discuss this matter in the next section.

Who can oppose the trademark?

The trademark Act of 1999 has established Section 21 that says that “any person” can oppose the trademark application. To do so, the person has to file a Notice of Opposition on the specified form with the prescribed fees. Things to keep in mind when discussing “any person” are:

  1. The person does not have to be a registered proprietor of trademark
  2. The person can be the purchaser of good.
  3. The person can be a member of the public that is most likely to use the good.

With these three factors, you can say that the person starting trademark opposition is not only representing himself, but the entire public as well. Why? Well, if there are two similar marks, or there is an offensive mark, it is only going to harm the public in either sentimental or a confusing way.

Steps involved with trademark Opposition

Following are the steps involved with trademark opposition:

  1. Filing the notice of trademark opposition/Counter statement filing: No, they are not the same. Both of these filings happen one after the other. Let us discuss both of them separately:
    1. Filing the notice of trademark opposition: While the trademark is still published in the journal i.e. the 4 months prior of trademark publishing aren’t over yet, any person can oppose the registration. To do so, they have to file the TM-O application and submit the trademark opposition fees. The application is delivered to the Registrar of Trademarks and once all the details are examined, it is forwarded to the party that applied for trademark registration.
    2. Filing the Counter Statement: The recipient of the notice must file the counter statement within 2 months after receiving it. The form used here is also called TM-O. The specified 2 months are quite important. If there is any lax from the side of the recipient, and the 2 months pass, there are no extensions and the trademark shall be abandoned.

Important tip to file a counter statement: Only a trademark attorney has the know-how to file the counter statement in the trademark opposition cases.  When filing the opposition, they have to counter each aspect of opposition with each paragraph.

  1. Evidence Filing: There are two sorts of evidences in the trademark opposition cases: One supporting the opposition, other opposing the opposition.
    1. Rule 45: Evidence supporting the Opposition: After the recipient has filed the counter statement, then within 2 months of that, the opponent has to present evidence to support his opposition against the trademark application. However, in case he only wants to rely on the facts that have been stated in the notice, then under Rule 45, he can waiver the affidavit. However, he still has to inform the Registrar though.
    2. Rule 46: Evidence Opposing the Opposition: You can call it as evidence supporting the trademark application. Once the applicant of trademark has received the Rule 45 evidence from the opponent, he has to present evidence to support his application. However, there is an also an option to not put forward the evidence and only rely on counter statement of the trademark.
    3. Rule 47: Evidence in Reply: Within 2 months after receiving the evidence under Rule 46, the opponent can provide even more evidence as a reply to the Evidence from the Trademark applicant.
  2. Step 3: Trademark Hearing: Once all the evidences are submitted from both the parties, the registry appoints a trademark hearing and notifies them. If any of the party has a problem with the date of the hearing, they can file a form called TM-M to adjourn or delay the hearing. Both the parties are only allowed to delay the hearing twice and only for 30 days. Anyway, the registry now reviews the evidences presented by both the parties and reaches a conclusion after properly analyzing the evidences.

If any of the parties is against the decision of the registry, they can apply to the trademark appellate board.

Conclusion

The proceedings for Trademark opposition in India involve a lot of hoops. Furthermore, as an applicant, it can derail your aspirations if you are not careful. On the other hand, as a holder of a registered trademark or any person, you should oppose if you feel like any sort of antagonism towards the trademark. At Registrationwala, we only charge you a minuscule trademark opposition fees and make sure that whether you are an opponent or an applicant you win and retain your rights towards your trademark

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