An Overview of Trademark Opposition
When the application for Trademark Registration in India is applied, it is publicized by the Trademark Registrar in the Trademark Journal, any individual or third person can file a Trademark Opposition to the application of Trademark Registration within four months from the date of advertisement. When an opposition has been filed against your Trademark application, the online status of Trademark Registration will show as "Opposed".
During the submission of the application of Trademark Registration, the examination of Trademark is followed; if your Trademark application is found suitable for registration, then it will be published online in the Trademark Journal. The primary purpose of such publishing is to get the work known to the public and enable any third party to raise Opposition against the application. Only if he or she is aggrieved by the registration shall raise the Trademark Opposition online.
There are two primary interference in the registration of a Trademark; Trademark Opposition and Trademark Objection. In case of not filing the reply or response of such interferences, then your application for Trademark Registration can be refused or cancelled. It has been observed that the application for Trademark Registration is rejected after submission of a legally week counter statement.
We suggest you take help from a Trademark expert or consultant or such professional having robust drafting defence skill, mindful of current case laws, and is capable of drafting a robust "Counter Statements or Trademark Opposition Reply" against the Trademark Opposition so raised by parties claiming to be aggrieved by your registration of Trademark.
Swarit Advisors has huge experience in filings robust Trademark counter statements; its Trademark Registration experts or consultants have set a level in demonstrating the counter statements and will also help you avoid Trademark Opposition; contact us to get counter-statement of Oppositions filled through us.
Who is Eligible to File a Trademark Opposition?
Following is the list of all the applicants who can file a Trademark Opposition:
- Any person can file the Opposition, and it can be a company, an individual, Trusts, and Partnership Firms;
- It is completely fine in cases where two or more persons or parties have similar issues against a Trademark there can be joined Trademark Oppositions as opponents against Trademark Registration;
- Previous use of such Trademark;
- The owner or proprietorship of former Trademark application.
Where can you file the Notice of Trademark Opposition?
The notice of an Opposition of Trademark must be filed at the Registry of Trademark, where the application for the conflicting mark has been filed. For instance, consider if the application is filed at the Delhi Office of the Trademark Registry; in such case, the Opposition proceedings should initiate in Delhi only.
What can be the next move if the status appears as "Opposed"?
If the Trademark status looks as “opposed”, the applicant needs to prepare a counter-statement within the time duration of 4 months from the advertisement date. It will be judicious if the applicant gets your counter statements framed by a Trademark consultant and filed by them. Remember that the application of Trademark will be unrestricted if no such counter-statement is filed by the Trademark Registry within the specified time period.
Grounds of Opposition
A pending application of Trademark may be opposed on the following grounds:
- The mark is a general term for the associated services (in any language);
- The mark is chiefly simply a surname;
- The Trademark is forbidden in the Emblem and Names Act, 1950;
- The Trademark is opposing to the law or is prevented by law;
- The Trademark is expressive in nature;
- The application is likely to mislead the public or create confusion;
- The mark is disreputable, dishonest, or obscene;
- The Trademark is expected in the present language or the established business practices;
- The Trademark is confusing with another Trademark, an Olympic, official mark, or a geographical indication registered in India;
- The Trademark includes matters that are likely to harm the religious feelings of any class or section of people;
- The Trademark application is made with bad faith;
- The Trademark is empty of distinct character;
- Another party had former use of the Trademark or a confusingly similar Trademark in India;
- The applicant used the Trademark only as a licensee of another party;
What are the Vital Documents Required for Trademark Opposition in India?
Following are some vital documents required to file Opposition of Trademark in India:
- Submit all the applicant's details, such as full name, full address, nationality, qualification, etc., of the applicant. Body corporates or other categories need to deliver with Registration Certificate;
- Submit a Power of Attorney, and it permits the attorney to file the Opposition on your behalf;
- Submit an Affidavit with the basic info about the Trademark and its user data and evidence of use;
- Detailed information about the mark against which the Trademark Opposition is to be filed in the name and basic grounds for filing the Opposition.
What is the Procedure for Trademark Opposition?
Following is the procedure for Opposition of Trademark in India:
- Any individual aggrieved of proposed Trademark Registration can file an opposition notice online within four months from the advertisement;
- After that, within two months of the receipt of opposition notice, the applicant can file a counter statement;
- Along with the statement, some supporting proof shall be attached if available. The counter-statement should be filed within two months (extendable one month) by way of an affidavit;
- The challenger also delvers certain proof in their arguments, but he or she has an option to write to the Trademark Registrar telling he or she doesn't want to file evidence and specifics are the relying points all he or she has;
- On request, the opponent may be permitted one month (extendable by one month) to file proof in reply to the evidence of the applicant;
- The hearing will be held, and bases on the opposition notice, evidence filed, and counter-statement, the Trademark Registrar will conduct the hearing;
- On receipt of the hearing notice, within fourteen days, the parties are required to notify the Registrar of their intention to appear in the matter;
- Finally, both the parties on being given enough chance of being heard, the Trademark Registrar decides the matter upon merits;
- In case the matter is decided in favour of the applicant, the Trademark will be registered, and a certificate shall be issued. If the Trademark Registrar decides in the opponent's favour, then the application of Trademark will be rejected due to such Opposition.
- In case the counter-statement is not filed within two months, the applicant will be deemed to have abandoned the application of Trademark.
- Upon receipt of the opponent’s evidence, even the application is provided with two mo0nths for filing evidence in support of the application, if any.
The Opposition is a kind of remedy, which can be availed by a registered owner or earlier user of Trademark. But, all the registered owner or earlier user of a Trademark is required to keep their eyes open to raise the Opposition.
What is the Difference between Trademark Objection and Opposition?
- Trademark Objection is issued by the examiner of Trademark whereas; the Opposition is filed by the third party;
- The person raising the Trademark Objection is not needed to pay any fees for objection, but a person who raises the Opposition files it with the prescribed fees;
- The Trademark Objection has to be raised within one month, and in case of the Opposition of Trademark, it can be filed within four months from the advertisement date;
- Acceptance of Trademark, which is communicated to the applicant, will be published online in the Trademark Journal, whereas in case of Opposition the judgment will be linked to the parties that is the aggrieved and the Trademark applicant.
Frequently Asked Questions
Any person who thinks their brand name or reputation of the company may be harmed in any way by the registration of a definite mark may opt to oppose such registration by filing the notice of Trademark Opposition.
The complete procedure of Opposition may take one year approx.
Anyone can file for the Opposition, it is started by an individual who is the owner of a prior Trademark that deals with the same products or services or that has a possibility of creating confusion or damage a present mark can file a Trademark Opposition, even if its own mark is not registered.
It means that the Trademark examiner hasn't raised any Trademark Objections against the proposed Trademark, and moreover, your mark will be published in the Trademark Journal.
Usually, a Power of Attorney must be submitted while filing the notice of Opposition. In case the attorney is not available while filing the Opposition of Trademark, it can be filed at a later date.
It is extremely suggested that a Trademark opposition should be filed after a Trademark is published in the Trademark Journal.