Trademark is a kind of protection of the Intellectual Property Rights of a person. A Trademark distinguishes between various products and services by providing a brand value to them in the market. Registration of Trademark non-deliberately attaches a quality value to all the products. The Registration of Trademark is necessary to create a reputation and have a distinct feature in the market. The Registration process of Trademark is lengthy and also included the advertisement of the mark in the Trademark Journal. Any person can initiate proceedings under the Trademark Act, 1999, for Trademark Opposition during the advertisement of the application of Registration in Trademark Journal.
Under Trademark Opposition, a third party can stop an individual or company from obtaining Trademark Registration of a mark, which is distinct or is already in usage in the market. The Opposition is done to avoid confusion between consumers regarding the brands which are availing good services or are in good form. The Trademark Opposition is essential for the protection of Intellectual Property Rights. In this article, we will discuss the meaning, grounds, and procedure of Trademark Opposition.
What is Trademark Opposition?
Trademark Opposition comes in operation when the Registrar approves the application of Trademark Registration. The Trademark when gets registered entry for the same is done in the Registry of Trademark. The Trademark Register purity is the vital concern, and for this reason, the Indian Trademark Act, 1999, has a scrutiny procedure to check and ensure the purity of Register of Trademark. The scrutiny procedure is 3 tires as the purity of Register is utmost. The first scrutiny is conducted by the office of Trademark. The office checks for the Trademark database and check whether a similar or identical trademark is already registered with the Registry or not. In case there is a need to issue office actions, the office will issue the same. The Registration process of Trademark can only move ahead once the office action is overcome by filing a proper response to them. Once the Registrar of Trademark is satisfied with the response, then only the application is advertised in the Trademarks Journal. According to Section 21 of the Trademarks Act, 1999, ‘any person’ can initiate Trademark Opposition proceedings against the Trademark. The Opposition of Trademark should be raised in the prescribed period only. The Opposition of Trademark is filed against the Registration of Trademark by a third party. The third stage of scrutiny is Trademark Rectification, which occurs only if the Trademark is already registered with the Registry.
The guidelines under which the third party can file the Opposition are prescribed under Trademark Rules, 2017[1]. The primary motive to make an advertisement for the application of Registration is that the common public should get to know about the overall content of the application. If any person finds that his/her Intellectual Property Rights are violated due to the privileges stated in the Registration application, he/she can file for Opposition of Trademark for the violation in the stipulated time period. The Opposition should be filed within stipulated time period. Otherwise, if not filed in the time period, the opportunity to file an application for Opposition if lost forever. Once the deadline to file an application for Opposition of Trademark is over, and no Opposition is filed, the Registry can go further with the Registration of Trademark by providing Trademark Privileges to the applicant.
Who can file Trademark Opposition?
As per Section 21 of the Trademark Act, 1999, ‘any person’ can file for notice of Opposition for Trademark. The words “any person’ include companies, individuals, trusts, and partnership firms. Furthermore, in the case of 2 or more persons have the same issues against the same Trademark, then all the persons can be joined together as opponents.
Ordinarily, on the other hand, the application for Opposition of Trademark can be filed:
- By the owner of an earlier registered Trademark or application associated with a similar Trademark for similar goods.
- By any person who is using the same or similar Trademark prior to the new applicant, but till now, Registration of Trademark is not sought out by the Registry. {PRIOR USE}
What is the time limit for Filing Trademark Opposition?
The time limit for filing of the application for Opposition of Trademark is 4 months from the date of advertisement or re-advertisement of Registration application of Trademark. Once the time period prescribed for filing of the Opposition of Trademark is finished, the person loses its chance to file for Opposition forever.
What are the grounds for Trademark Opposition?
An application pending for Trademark Registration can be opposed on the following grounds:
- The Trademark used is obscene, scandalous or immoral;
- The Trademark used is prevented by law or is contrary to law;
- The applicant used by the Trademark only as a licensee of some other party;
- The Trademark used is devoid of its distinctive character;
- The Trademark used is of descriptive nature;
- The Trademark application was made in bad faith;’
- The Trademark is likely to confuse and deceive the common public;
- The Trademark is priorly used, or another party uses a confusingly similar Trademark;
- The Trademark contains such matter which can hurt the religious feelings of any section or class of people;
- The use of Trademark is prohibited under the Emblem and Names Act, 1950;
- The Trademark is similar to an already registered Trademark, an Olympic mark, Official Mark or a geographical indication registered in India;
- The Trademark is merely a surname;
- The Trademark is a generic term for the associated services or wares;
- The Trademark used is customary in the current language or already established practices of business.
What are the pre-requisites for Trademark Opposition?
The pre-requisites depend on different grounds of the Oppositions. The required documents and details based on different grounds are as follows:
- The Opposition of Trademark is based on an already or previously registered trademark; the opponent is required to clearly mention the details, application number, and the priority date related to the already registered Trademark.
- The Opposition is filed by a licensee then the name and address of the licensee. In addition to the details of the licensee, an indication which indicates that licensee is authorized to enter the Opposition of Trademark.
- In the case where the opposing party is a foreigner, and having no place of business in India, then the name of the opponents and the address for service in India is required.
- The Opposition of Trademark is based on an already existing well-known trademark or a Trademark having good reputation in the market; the opponent is required to submit any document which will act as an evidence of such already existing well-known Trademark. Further, the opponent should mention an indication of the countries where the earlier registered Trademark is recognized to be a well-known existing Trademark. The opponent can also present the proof of the Registration of Trademark or application for Registration of Trademark.
What are the contents of notice for Trademark Opposition?
As per Rule 43 of Trademark Rules, 2017, the notice of Opposition of Trademark should contain the following:
- The application number of the Trademark against which Opposition is filed;
- An indication of all the goods or services listed in the application of Trademark against which the notice for Opposition is filed;
- The name of the applicant for Trademark against whom Opposition is filed;
- A statement declaring that the Trademark against which Opposition is filed is a well-known Trademark within the Section 11(2) of the Trademark Act, 1999. The countries where the Trademark is already a well-known Trademark should also be stated in the statement;
- The name of the Opposing Party;
- The application number of the Opposing Party;
- The Trademark of the Opposing Party.
Read our article:How Can You Apply For Online Trademark Registration in India?
What is the Procedure of Trademark Opposition?
The procedure to file for Trademark Opposition is as follows:
Filing of Notice of Opposition
The Opposition notice should be filed within 4 months from the date of publishing of advertisement in the Trademark Journal. The notice is submitted in form TM-O along with the prescribes fees. The notice should state all the details of the opposite parties and the grounds of filing the Opposition of Trademark. The notice of Opposition first reaches the trademark registry, where the officials check the notice application that whether all the requirements are fulfilled or not. Once the officials are satisfied with all the requirements, the notice application is sent to the applicant of Trademark. The applicant of Trademark, then goes through all the issues raised and concerns of the opponents and prepare for the hearing in the court. The court hearing will take place in the same place where initially the Opposition was filed by the opponent.
The notice of Opposition of Trademark should be filed in the same office where the applicant files the original application for Trademark Registration. For example- The Head Office of Trademark Registry is at Mumbai, and the application for Trademark Registration is filed in Mumbai. So, the notice of Opposition of Trademark will be filed at Head Office in Mumbai.
Filing of Counter-Statement
Rule 44 of The Trademark Rules, 2017, states that after notice of Opposition is filed, the applicant for Trademark Registration can file a counter statement. The counter-statement should be filed in form TM-O. The time period prescribed for filing of counter-statement is 2 months from the date of receipt of the Opposition notice, and the time period of 2 months is not expendable. The counter-statement files should comprise of the following:
- A paragraph wise encounter of every ground made in the Opposition notice by the opponent.
- Any fact alleged in the Opposition notice is admitted by the applicant, then that fact should be set out in the counter statement.
- The verification of the counter-statement should be signed by the person making the counter statement and should state the place at which and date on which the statement is signed.
- The counter-statement should be verified at the foot of the opponent or by his authorized agent. The agent should specifically state referring to the numbers of the paragraph of the Opposition notice that what the agent verifies himself on his knowledge and what he verifies on an information believed and received to be true.
The failure to file the counter statement by the applicant will make the application of Trademark Registration abandoned and deserted, and the Registrar will take the Registration application down from the Trademark Journal. After taking down the application of Registration, the Registrar will not approve the application for the Register of Trademark. The applicant can also file the counter-statement on the basis of the electronic copy of the Opposition of Notice made available on the website of the Trademark Registry.
Production of Evidences
The different types of evidences which need to be filed by the opponent and applicant of the Trademark are as follows:
- Evidence in Support of Opposition
Under Rule 45 of the Trademark Rules, 2017, the opponent has to provide for evidences in support of the Opposition in the form of an affidavit. The evidences in support of Opposition should be filed within 2 months from the date of receipt of the counter statement.
The opponent can also choose to waive the filing of an affidavit under Rule 45 of Trademark rules, 2017, if the opponent solely wants to rely on the facts which are stated in the Opposition notice. The opponent has to inform the other party and officials of the Trademark Registry of such waiver, otherwise the notice of Opposition will be treated as abandoned.
- Evidence in Support of Application
The applicant of the Trademark Registration is required to provide for evidences in support of the application for Registration of Trademark. The evidences in support of the application are files as per Rule 46 of the Trademark Rules, 2017. The support evidences for application should be filed by the applicant within 2 months of filing of receipt of the evidences/intimation of waiver by the opponent.
- Evidence in Reply
The opponent again is given the option to present more evidences in support of his Opposition as per Rule 47 of Trademark Rules, 2017. The presentation of such evidence should be done within 1 month of receipt of the evidence under Rule 46 of Trademark Rules, 2017. To achieve some conclusiveness in the proceedings of Opposition and to rebut the produced evidences by the applicant and rest the case, this provision of reply is provided.
Hearing
After the completion of the evidence submission stage, the Registry of Trademark appoints for a hearing, and the parties are notified about the same. The date of hearing should be at least one month after the date of the first notice of hearing. The parties to the hearing are given an opportunity to notify the Registrar about the intention of appearing in the hearing. The adjournment request can be made under form TM-M. The adjournment request should be made at least 3 days before the date of hearing. A maximum of 2 adjournments can be requested by a party, and the duration of each adjournment is restricted to be not more than 30 days.
After hearing and reviewing all the evidence submitted to the Registry, the Registrar should determine that whether the Trademark applied should be registered or not and thereby bringing the proceedings for Opposition of Trademark to a conclusion.
Appeal
After the decision for the Registration of Trademark is concluded by the Registrar, the party aggrieved from the decision of Registrar can challenge the same by filing an appeal before the IPAB (Intellectual Property Appellate Board).
What are the benefits of Trademark Opposition?
The benefits of Trademark Opposition are as follows:
- In the creation of a brand, the popularity and demand of the public plays a vital role. It is very important for the approval of a Trademark to consult the common public for the Registration of an applied Trademark.
- The owners of the Registered Trademarks have an opportunity to stop any other similar or identical Trademark, which can, in the future, hinder or dilute the reputation of their already registered Trademark.
- The owner can also stop the cause of any possible confusion in the minds of the common public when there is a similar Trademark in the market.
Conclusion
The maintenance and creation of a brand is a big responsibility, and a large amount of funds are needed for the same. Hence, the application for the creation of a brand should pass through a number of checks and scrutiny before getting Registered. The Registration helps a brand to prove the validity and distinctiveness in the market. Hence, Trademark Opposition is an essential and critical stage in the registration process of Trademark. The Opposition is one of the most effective remedies to secure and protect your Trademark. The Opposition of Trademark should be filed in the prescribed period; otherwise, it will result in a lapse of the right to file for Opposition. The limitation in time period plays a significant role in awarding the remedy to the person aggrieved. The process of filing for Opposition of Trademark is time-consuming and long-lasting. We at Corpbiz have experienced professionals to help you with the process. Our professional will guide you for the process of Trademark Opposition. The professionals will ensure the successful and timely completion of your work.
Read our article: Know How to File Trademark Objection Reply
