Trademark Opposition in India

Trademark opposition is basically filed for opposing a trademark which is advertised in the journal by the trademark registry from registration. It is mainly a way to protect your trademark being misused by the others or to stop someone trying to take benefits of your creativity or efforts without your permission.

For this Trade and Merchandise Marks Act, 1958 had been introduced by the government which is repealed by the Trademark Act, 1999 in the year in the Fiftieth Year of the Republic of India

A trademark opposition is a legal challenge to the right to register a particular trademark. A trademark opposition is instituted by filing a notice of opposition with the Trademark Trial and Appeal Board and paying the required fee. The trademark notice of opposition must be filed within 3 months of the date that the trademark application is published for opposition unless a request for an extension of time to oppose is filed with the Board (which is usually instantaneously granted).

A trademark opposition must allege one or more grounds for challenging a trademark application. Most often, a trademark application is opposed by someone who owns prior rights in an identical or confusingly similar trademark. But, trademark applications can also be challenged on a number of other grounds.

For instance, oppositions may be based on the opposer’s belief that the trademark is merely descriptive, deceptively misdescriptive, generic, functional, or likely to dilute the distinctive quality of the opposer’s famous trademark. In addition to alleging a valid ground for opposition, the opposer needs to show that it has standing to oppose the application. In other words, the opposer must allege in the notice of opposition that it has a direct and personal stake in the outcome of the proceeding and that it could be harmed by the registration of the trademark.

Shortly after a notice of opposition is filed, the Board will institute the opposition proceeding, assign it a proceeding number, and notify both parties of the schedule the opposition will follow. This schedule informs the parties of many important dates and deadlines by which certain actions must be taken. However, the schedule can be quite easily amended through mutual agreement between the parties and approval by the Board.

What are the different grounds for trademark opposition in India?

The term “Trademark Opposition” is an objection filed by a third party against a trademark’s registration within the time period in which the trademark in question is residing in the journal. In order to file a trademark opposition notice, the aggrieved person – the one who is opposing the registration of a trademark – has to establish one of the following grounds:

Trademark-Opposition-in-India

Copied Trademarks: The mark that doesn’t have any distinct features or characteristics from a registered trademark.
TDescriptive Trademarks: If the trademark vehemently describes the quality, intended purpose or the quality of the product, it comes under the grounds of trademark opposition in India.
Deceptive Trademarks: The trademarks that have certain features similar to an existing brand are considered to have the potential to confuse the public – deceiving them. Such deceptive trademarks can be opposed.
The Prohibited Trademarks: Brand names or devices that are prohibited under the Emblem and Names Act, 1950 come under the prohibited trademarks.
Common Trademarks: Common trademarks are general terms that are used in everyday life. Such marks can face opposition from a third party.
Hurtful Trademarks: Certain trademarks that can hurt the sentiment of a particular community come under brand names that can face opposition on the grounds of being offensive.

Is Trademark opposition the same as Trademark objection?

One question that often bothers those watching over the legality of brand names is the difference between trademark objection and trademark opposition. There is an array of differences that exist among these brand names and they are as follows:

Trademark Opposition	Trademark Objection
The issuer of a trademark Opposition notice is a third party.	The issuer of trademark objection is the Trademark Registrar.
A trademark opposition fees have to be paid during the notice filing procedure.	No fee is paid by the registrar when delivering the trademark objection notice.
A trademark opposition is raised during the four months period of the trademark publication.	The Notice of Trademark Objection is filed within a month after trademark application filing.
Trademark Opposition isn’t a part of the registration process, it is an obstacle.	The ratio of trademark objections states that they are necessarily part of the procedure.
After the passing of the judgement, the opponent and the aspirant, both can file an appeal for re-hearing.	After the rejection, the applicant can make an appeal to the trademark appellate authority.

As you can see, there is an array of complications you might end up facing when you are opposing a trademark or facing trademark opposition.

Complications when you are delivering the notice of opposition trademark

When you are filing the notice of opposition, trademark laws that exist can put the following complications before you:

Providing all the details to support your opposition case: The notice you deliver to the person whose brand name you are fighting against has to be informative. it should contain every little detail, no matter how minute that can help you win your case.
The delay in receiving a reply: You only have a limited window within the trademark opposition timeline wherein you must file the notice and expect a reply within three months. However, the longer you wait, the more chances are for your opponent to come up with the perfect trademark opposition reply.
The legal complications are too many: When opposition of trademark is your concern, the legal complexities you will face are many. These complications aggravate when the brand name you are up against is a popular one in India.

Complications-for-an-opponent

Complications that you will face when your trademark is being opposed against

Facing a trademark opposition notice once you face the trademark opposition is an issue in itself. However, once you start the opposition proceedings, you are bound to face the following issues:

Delivering all the details in the counter statement: The counter statement trademark opposition in India is your way to fight off your opponent. However, because it is your brand’s existence on the line, being thorough in whatever counter statement trademark opposition format you provide is the least you must be.
Limited time to deliver the counter After receiving a notice of trademark opposition, you have a limited window within which to file a counter statement. You must consider your time carefully when drafting the very document that can help you fight off your opponent. The opposition of registration of a trademark can be filed within four months during which the trademark is published. If you lose that window, you will lose your chance to oppose the brand/
Evidence should be abundant: If there is one thing you can’t compromise with when walking into trademark opposition proceedings, it is evidence. To ensure that the trademark opposition board rules in your favour, you have to put together all the evidence required for the procedure.

As you can see, whether you are the one initiating the trademark opposition process, or are the one who wants to fight against it, you need the aid of trademark registration experts.

That is where Registrationwala comes in. We have handled an array of trademark opposition cases throughout the course of our professional experience. Their varying nature and the dedication of our trademark opposition service providers will be more than enough to help you win your case.

Eligibility Criteria for Trademark Opposition

There are two sets of eligibility criteria to keep in mind when diving into the trademark opposition process in India: As an opponent and as an aspirant.

As an trademark registration aspirant, In order to be eligible to up against trademark opposition, you need to have all the evidence to back up your case.

If you are the one opposing a registered trademark, then you must have a case sturdy enough to deal with existing brand names in India. Following are the entities that can become opponents to the trademark registration request:

Any person, company, individual, trust, society, LLPs and partnership firms
Two persons with the same issue against trademark registration. They can either jointly oppose the trademark or draft their separate opposition notices.
Previous users of the brand name
The current proprietor of the trademark in question.

Documents Required for Trademark Opposition

Following are the documents that are required for trademark Opposition:

Authorization Documents: Here, the authorization documents can refer to the Trademark opposition form 5 or the application, or the counter statement trademark opposition in India, a sample of which can be in a PDF format.
Evidence in Support of Notice of Opposition/Counter-Statement: Here the evidence that you need to provide has to be thorough. Regardless of how insignificant the evidence might seem, you must provide all the evidence, even a speck of information can prove reliable during the trademark opposition proceedings.

Simply put, the documents you require as an opponent are as follows:

Notice of opposition to a trademark application
Evidence to support your case

The documents you require as the trademark registration applicant:

Counter statement in a reliable format
Evidence to support your case

Documents-Required-for-Trademark-Opposition

Process for Trademark Opposition

The simple trademark opposition process in India is as follows.

Get the notice of opposition
File the documents and the evidence
Start the process of trademark opposition counter

Here is the complete explanation of what happens during the trademark opposition procedure:

Process-for-Trademark-Opposition

Filing of the trademark opposition notice: First, the aggrieved person fill out then fill out and delivers the trademark opposition notice to the applicant during the months of advertisement of the brand. The document is derived from the standard notice of opposition trademark sample in India.
Filing of the counter-statement: After receiving the notice, the applicant must file a counter statement within 2 months. If no counter statement is filed during that time, the trademark application is abandoned.
Assessment of the statements: The trademark authorities will assess both statements and will then ask for evidence.
Filing of trademark opposition evidence: The opponent will then file trademark opposition evidence to support their stand of opposing the registration of the trademark. It should be done within two months of receiving the counter-statement from the applicant. If the opponent fails to present the evidence during that time, the trademark application will be accepted.
Filing of counter-statement evidence: Within two months of receiving the trademark opposition evidence, the applicant must provide evidence to support the trademark registration. If the applicant fails to do so, the application will be abandoned.
Final hearing: After receiving the evidence from both sides, the trademark opposition authority will conduct a hearing. After hearing both sides of the argument, it will give the final decision.

Our Assistance to file the Trademark Opposition

We, at Registrationwala provide end-to-end solutions for Trademark Opposition. Our services include:

Collection of information and starting the process
Drafting the application
Reviewing the draft and making changes if necessary
Representing you in trademark Opposition

Registrationwala.com is a leading legal consultancy firm providing comprehensive services relating to Trademark Opposition.

Frequently Asked Questions for Trademark Opposition (FAQs)

Q1. What is trademark opposition?

Q2. Where can I download the format for the counterstatement?

It is not advisable to use a template for reply to trademark opposition format. You must instead hire a specialist to help you deal with the case of trademark infringement in India.

Q3. Where can i download a sample notice of opposition trademark?

You can download the sample of a trademark opposition notice from any online portal. However, since the reasons for opposition vary, it would be better for you opt for a consultant who can draft for a customized notice of opposition.

Q4. How to fight a trademark opposition?

To fight trademark opposition, you need to fill out a counter-statement along with the evidence to support your registration.

Q5. How to file a trademark opposition?

To file a trademark opposition, you need to fill out a notice of trademark opposition to the IP authorities along with requisite fees for the same.

Q6. How to answer the notice of opposition in Trademark?

To answer the trademark opposition notice, the applicant must file a counter statement within two months of receiving the notice.

Q7. How to avoid opposition while registering trademark?

There is no direct way to deal with trademark opposition in India. That being said, you can make sure that:

Your trademark is unique
Your application is without any issues
And, you have ample evidence to support your claim to your brand name

Q8. How to draft suit for trademark opposition in India?

To draft a suit of trademark opposition in India, you can refer to the Manual of Trademarks. Or, you can get the aid of Registrationwala’s legal team to draft a suit on your behalf.

Q9. How to settle trademark opposition?

Trademark opposition can be settled by either the following ways:

Retracting your trademark application
Having a good evidence to win the trademark opposition case
Making rectification to the trademark

Q10. How long does an Opposition take?

The complete procedure of trademark opposition can take up to one year. However, if the case is complex, it can take more time.

Q11. What is an opposition notice?

A trademark opposition notice is the document filed by the opponent of trademark registration.

Q12. Is it necessary to submit a power of attorney while filing a notice of opposition?

Yes, a power of attorney must be filed while filing the notice of trademark opposition.

Q13. How to withdraw opposition to trademark?

You can withdraw trademark opposition notice using a special petition and submitting it to the court. However, if you fail to present any evidence to support your opposition within two months, your opposition will be considered withdrawn.

Q14. Is trademark classification important for filing opposition?

Yes, you must mention the trademark class while submitting trademark opposition form.

Q15. What is content in counter statement of trademark opposition?

The counter statement of trademark opposition contains the following details:

Facts alleged in notice of opposition
Paragraph wise counter statements

Q16. What is counter statement of trademark opposition?

Counter statement is the legal document to challenge the notice of trademark opposition.

Q17. What is procedure of trademark opposition counter statement?

The procedure of trademark opposition counter statement entails of the following steps:

Assessment of the trademark opposition notice
Drafting the counter statement
Submitting the statement within two months of receiving the opposition.

Q18. Why trademarks are published for opposition?

Trademark is published for opposition to ensure that only original brands that don’t violate any provisions of the trademark act get known in India.

Q19. How long is opposition period for trademark?

The trademark opposition period is same as the time the trademark is advertised in the journal.

Q20. Where to get my trademark opposition details?

You can get the opposition details of your trademark by logging in to the IP India portal and checking your trademark registration status.

Q21. Who can file trademark opposition?

Any person, company, individual, trust, society, LLPs and partnership firms
Two persons with the same issue against trademark registration. They can either jointly oppose the trademark or draft their separate opposition notices.
Previous users of the brand name
The current proprietor of the trademark in question.