Overview on Trademark Opposition
A trademark opposition is an objection filed by a third party against the registration of a trademark that has been accepted and published in the Trademark Journal. Hence, Trademark Opposition is a vital technique that assists firms in combating trademark infringement. You have a limited time to file a Trademark Opposition application. In this post, we will learn everything there is to know about trademark opposition in India.
According to the Trademarks Act of 1999, any individual or business can file a trademark opposition application in the prescribed format. As a result, even if you do not have your own trademark registration in India, you can still file a Trademark Opposition to challenge other trademarks.
Who is eligible to file a Trademark Opposition?
Section 21 of the Trademark Act states that "any individual" may oppose a trademark, regardless of their business or personal interest in the topic.
A trademark can be challenged by a customer, a member of the public, a rival, or anybody else. Also, the individual filing the trademark opposition must be a previously registered trademark owner.
Following the filing of a trademark opposition, both parties must decide whether the trademark should be abandoned or registered.
Anyone who believes that the published mark may cause public misunderstanding may submit an objection, whereas the trademark registrant is responsible for defending the trademark.
Reasons to oppose a Trademark
The Indian trademark law does not specify any grounds for resistance. The following are some of the reasons why a trademark opposition may be filed:
- The trademark is close or identical to a previously or currently registered trademark.
- The trademark lacks distinguishing characteristics.
- The trademark is self-explanatory.
- The application for trademark registration is made in ill faith.
- The trademark is common in the present language and/or in established business procedures.
- The trademark is likely to mislead or confuse the public.
- The trademark is illegal or prohibited by law.
- The Emblem and Names Act of 1950 makes the trademark illegal.
- The trademark contains material that is likely to offend any group or segment of people's religious sensibilities.
Where can I file a trademark opposition notice in India?
The Trademark Opposition Notice must be submitted with the trademark registry where the application for the conflicting mark was lodged.
Let us illustrate with an example: Imagine if the application is filed at the Trademark Registry's Delhi office; in that case, the opposition proceedings must begin exclusively in Delhi.
What should you do if your status says "opposed"?
In this instance, you must prepare a rebuttal statement within four months (3+ 1 month extendable) from the date of advertisement. It is prudent to have your counter statements drafted and filed by a trademark expert.
It should be noted that if no such counter-statement is filed by the registry within the specified time period, the trademark application will be abandoned.
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Procedure for Trademark Opposition
Any person may file a notice of opposition to a trademark that appears in the trademark journal within four months after the first date of appearance.
It must be submitted on Trademark Form 5 using the required format and fees.
Upon the filing of the trademark opposition notice with the registrar, the trademark registrar would serve a copy of the trademark opposition notice to the trademark applicant. The rebuttal statement must be filed within two months of receiving the opposition notices.
The trademark application will be "abandoned" if the trademark applicant fails to file the counter statement within the time frame stipulated. Therefore, understanding the state of trademark registration is required.
Following the evidence filing stage, the registrar must give notices to both parties announcing the date of the hearing, which must be at least one month after the first notice. The opposition notice, counter-statement filing, and evidence filed form the basis for the hearing. The matter is heard by the registrar, and if any of the parties fails to present for the hearing, the registrar rules against them.
Based on a review of the material submitted and a hearing of both parties, the registrar determines whether the objection was successful and whether the trademark should be registered or not. A party who is unhappy with the registrar's judgement may, however, appeal it to the Intellectual Property Appellate Board.
Trademark Opposition Time Limit
After three months after the trademark advertisement in the Trade Marks Journal, any person may dispute the trademark registration (which may be extended by a period not exceeding one month). Trademark opposition filings must be made at the Trademark Registrar's office and cannot be taken immediately to a Court or the Appellate Board (IPAB).
If a trademark objection is successful, the registration of the trademark will be denied. If the trademark opposition application is denied, the brand will be registered.
Submitting an Objection to a Trademark
- Specifics about the trademark application that is the subject of the opposition
The application number against which the opposition is filed, as well as an indication of the goods or services included in the trade mark application against which the opposition is filed, and the name of the trade mark applicant.
- Details of the prior mark or right on which the objection is based
If the objection is based on an existing trademark application or registration, provide the application or registration number of the prior mark. If the objection is based on a claimed well-known trade mark, a statement of which country or region the previous mark is regarded to be well-known is required.
- Information on the opposing party
If the opposition is filed by the owner of an earlier mark or right, his name and address, as well as an indication that he is the owner of such mark or right, must be included. If the opposition is filed by the successor in title to a registered proprietor of a trade mark who has not yet been registered as new proprietor, the name and address of the opposing party, as well as the date on which the new proprietor's application for registration was received by the appropriate office, must be included. If the opposing party does not have a place of business in India, include the opponents' name and address for service in India.
The opponent must file TM-5 in order to oppose a trademark Filing. According to the application, the trademark opposition must be filed with the appropriate trademark office. The following information must be included on the TM-5 form:
Information about the trademark application
- Application number in question
- The trademark application's indication of the goods or services
- The applicant's name for the trademark sought to be contested.
Information on the opposing party
- If the opposition is lodged by the trademark owner of an earlier mark
Name and address of the trademark owner, as well as evidence that he is the owner of such a trademark.
- If a trademark licensee files an objection
The name and address of the trademark licensee, as well as an indication that he or she has been authorised to file the opposition, must be included.
- If the registered trademark owner's successor files an opposition
Name and address of the successor, as well as the date on which the new proprietor's application for registration was received by the competent office, or, if this information is not available, was delivered to the appropriate office.
- If a party from outside India files an opposition
If a party from outside India files an opposition, name and address the opposing party, as well as India's service. The trademark opponent or a person authorised familiar with the circumstances of the case shall sign the notice of opposition.
The distinction between trademark objection and opposition
- Trademark opposition is usually filed by the aggrieved (third) party, whereas trademark objection is usually filed by the trademark examiner.
- The individual filing the objection is not needed to pay any fees; however, the person filing the trademark opposition must pay the applicable particular fees.
- The objection must be filed within one month of the advertisement date, and trademark opposition must be lodged within four months.
- Acceptance of the mark communicated to the trademark application will be published in the trademark journal; in the event of a trademark opposition, the decision will be informed to the parties, namely the trademark applicant and the aggrieved.
What services does Corpbiz provide in terms of trademark opposition?
Our trademark opposition services include the following: