The trademark application process doesn’t always happen smoothly. Many times, applicants face hurdles during this process. One of the biggest hurdles they face is trademark opposition. Trademark opposition is a legal process that involves a third party raising an objection against a trademark application that’s still awaiting registration. The opposition takes place after a trademark application has been accepted by the Trademark Registry but before it gets officially registered.
The application is published in Trademark Journal for a mandatory period of four months. During this period, any person who believes that a published trademark should not be registered by Registry can move ahead and file an opposition. In such a situation, the applicant must defend their trademark by responding to opposition. They must present all the reasons why the mark should be registered. The response must be provided within the prescribed period.
In case the applicant fails to defend the trademark within the prescribed period, the application may be treated as abandoned. However, if they defend the trademark within this period, the application moves to the next stage, i.e., evidence stage. It is extremely important to understand the trademark opposition process and take the necessary steps to protect the trademark.
Trademark Opposition meaning can be explained as a legal process whereby a third party files an objection against a trademark application published in Trademark Journal, which is a weekly public journal issued by Trademark Registry containing details of accepted trademark applications. There is a time period to file such an opposition, i.e., within 4 months from date the trademark is published in the Journal. The opposition is basically an attempt to prevent the registration of a trademark.
The need for opposition arises when a person believes that, for some reason, the trademark should not be registered. Some of the most common reasons for opposition of trademarks are similarity with an existing trademark, likelihood of causing confusion among consumers, the mark being offensive and lack of distinctiveness.
The opposition must be responded to in the prescribed manner and within the prescribed time limit. If the applicant fails to file a response within required period, the trademark application may be marked as ‘abandoned’ due to non-prosecution.
However, if applicant files a reply on time, the opposition proceedings continue to take place. The applicant must then convince the Registry that the trademark deserves registration. In case they are unable to do so, the opposition may be allowed and trademark application may be refused.
The trademark applicant must file a trademark opposition reply (a.k.a trademark counter-statement) within 2 months from date of receiving the opposition notice. The trademark counter-statement must be filed using Form TM-O. Along with the Form, they must pay the prescribed fee of Rs. 2,700 for online filing or Rs. 3,000 for physical filing. The fee is charged separately for each class. For example, if a counter-statement is filed online for 3 classes, the total fee will be Rs. 2,700 x 3 = Rs. 8,100.
A counter-statement generally includes details of any facts mentioned in opposition notice that the applicant accepts as well as a paragraph-wise reply to each ground mentioned in notice. The counter-statement must be verified by applicant or an authorized agent on their behalf. The verification should clearly mention which statements are based on personal knowledge and which ones are based on information believed to be true. It must also include signature, date and place of signing.
After checking all the documents and formal requirements, the Registrar usually sends a copy of counter-statement to the opponent within two months from the date of receiving it. To make opposition proceedings faster, the Trademark Rules, 2017 introduced the below-stated changes:
The applicant can file a counter-statement based on the opposition notice available on the Registry’s website. In such cases, the Registry is not required to separately send a copy of the opposition notice to the applicant.
Under the Rules, the option to request an extension of time for filing a counter-statement has now been removed.
If the applicant does not file the counter-statement within two months from the date they received opposition notice, the trademark application is treated as abandoned due to non-prosecution. However, if counter-statement is filed on time, the opposition process moves to evidence stage.
After both parties submit their respective evidence, the Registrar schedules a trademark hearing to decide the case. After reviewing the evidence as well as hearing both sides, the Registrar, in its final order, may make one of the below-mentioned decisions:-
Allow the opposition:- In this case, the trademark application is rejected and the trademark is not registered.
Reject the opposition:- In this case, the opposition fails and the trademark application moves forward for successful trademark registration.
Partially allow the opposition:- In this scenario, the trademark may be registered with certain conditions, restrictions or only for specific goods/services.
Also Read: Complete Guide to Trademark Licensing: Meaning, Process & More
Trademark opposition is one of the most dreadful situations for a trademark applicant. It greatly interrupts the trademark registration process and prevents it from moving forward smoothly. We completely understand that it is not easy to deal with and challenge a trademark opposition. Therefore, we recommend seeking professional assistance from IPR experts. Registrationwala is a leading firm for handling trademark opposition cases. We have helped many of our clients in dealing with trademark oppositions promptly and getting their trademarks registered, even when they had lost all hope.
If you are facing a trademark opposition issue, you can get in touch with Registrationwala for a free consultation. We will see how we can help you in the best way possible.
Q1. Which form do I need to use for filing a trademark counter statement with the Trade Marks Registry?
A. For filing a trademark counter statement with the Trade Marks Registry, you need to use Form TM-O.
Q2. What is the government fee for filing Form TM-O?
A. The government fee for e-filing Form TM-O is Rs. 2,700 per class. For physical filing, the fee is Rs. 3,000 per class.
Hey there, I'm Dushyant Sharma. With the extensive knowledge I've gained in past 8 years, I have been creating content on various subjects such as banking, insurance, telecom, and all the important registration and licensing processes for various companies. I'm here to help everyone with my expertise in these areas through my articles.
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