Trademark Opposition
Trademark Opposition
Opposition
Once a trademark application is accepted by the registry, it enters a crucial phase—publication in the government journal for a period of four months. During this time, members of the public have the opportunity to file an Opposition against the trademark. This stage is vital as it determines whether the trademark can move forward to registration or if any valid objections must be addressed. We are here to provide expert assistance and guidance throughout the trademark opposition process, ensuring a smooth and effective resolution.
Trademark Opposition
submitting an application to the Registrar of Trademarks. After reviewing the application, the Registrar will publish the trademark in the official trademark journal. During this publication period, any individual can challenge the trademark’s registration by filing an opposition with the Trademark Registry where the original application was made. If an opposition is filed, the Trademark Registry will conduct a hearing to address and resolve the issue.
The procedures and guidelines for trademark opposition are detailed in the Trademarks Act of 1999 and the Trade Marks Rules, 2017.
Initiation of Trademark Opposition -Eligibility
- According to Section 21 of the Trademark Act, 'any person' can oppose a trademark, irrespective of their commercial or personal interest.
- A trademark can be countered by filed by a customer, member of the public or competitor, or any other person. Also, the person filing the trademark opposition needs to be a prior registered trademark owner.
- After a trademark opposition is filed, both parties need to conclude whether the trademark should be abandoned or registered.
- Anyone who believes that the published mark might create confusion among the public can file for the Opposition while defending the trademark lies in the trademark registrant's hands.
Grounds For Trademark Opposition
The Indian trademark law does not provide any specific grounds of opposition. There are various reasons a trademark opposition may be opposed mentioned below:
- The trademark is similar or identical to an earlier or existing registered trademark.
- The trademark is devoid of distinctive character.
- The trademark is descriptive.
- The trademark registration application is made with bad faith.
- The trademark is customary in the current language and or in the established practices of a business.
- The trademark is likely to deceive the public or cause confusion.
- The trademark is contrary to the law or prevented by law.
- The trademark is prohibited under the Emblem and Names Act, 1950.
- The trademark contains matters that are likely to hurt any class or section of people's religious feelings
Trademark Opposition Procedure
The process of trademark opposition is as follows:
Initiating a Trademark Opposition
the Registrar within four months from the date the trademark application is advertised in the trademark journal. This submission is made using Form TM-O, along with the required fee.
The opposition notice must include details about the trademark registration application, information about the opposing party, and the reasons for the opposition. Within three months of receiving the opposition notice, the Registrar will send a copy of it to the applicant.
Stage One: Responding with a Counter statement
Upon receiving the opposition notice, the applicant has two months to submit a counterstatement using Form TM-O. This counterstatement should outline their response to the opposition. The Registrar will then forward the applicant’s counterstatement to the opposing party within two months.
If the applicant fails to respond within the two-month period, their trademark registration application will be considered abandoned, and the registration process will be halted.
Stage two:Presenting Evidence in the Opposition Process
The opposing party must provide evidence supporting their opposition to the Registrar within two months of receiving the applicant’s counterstatement. This evidence should also be shared with the applicant.
Following this, the applicant has two months to submit evidence supporting their application after receiving the opposition evidence. This evidence must be shared with both the Registrar and the opposing party.
Optional Stage Three: If necessary, the opposing party has an additional month to submit further evidence after receiving the applicant’s evidence. This additional evidence must be shared with both the applicant and the Registrar.
Hearing & Determining the Outcome of the Opposition
After the evidence exchange, the Registrar will schedule a hearing and notify both parties. If the opposing party is absent, their opposition is dismissed, allowing the trademark registration to proceed. If the applicant is absent, their application is considered abandoned and dismissed. The Registrar will review all written arguments submitted by both sides.
Following the deliberation, the Registrar will decide whether to grant the trademark registration or dismiss the application. The decision will be communicated in writing to both parties at their specified addresses.
Conclusion & Final Steps in the Trademark Opposition Procedure
If the Registrar rules in favor of the applicant, the trademark will be registered, and a certificate will be issued. Conversely, if the decision favors the opposing party, the trademark registration application will be denied.
Importance of Compliance with Filing Requirements
Both the applicant and the opposing party must adhere to filing requirements during the opposition process, as failure to do so can have serious consequences:
- Abandonment of Opposition: Failure to submit counter-reply or supporting documents on time may lead to the abandonment of the Opposition, allowing the trademark application to proceed.
- Removal of Trademark Application: If the applicant fails to respond or provide necessary Evidence, the trademark application may be removed, preventing registration.
Significance of Trademark Opposition in India
The trademark opposition procedure in India ensures that only qualified trademarks receive registration. It allows for public involvement and prevents conflicting trademarks from existing simultaneously in the market. Adhering to deadlines and filing requirements is essential for presenting a strong case.
If you are dealing with trademark opposition or considering opposing a trademark, consult us for expert guidance and support throughout the process.
AKSH IP Associates: Your Trusted Partner in Trademark Opposition
AKSH IP Associates offers comprehensive assistance in the trademark opposition process in India:
- Expert Guidance: Our experienced professionals, knowledgeable in trademark laws, provide advice and guidance throughout the opposition process, ensuring a well-founded and effective challenge.
- Thorough Trademark Search: Before starting the opposition, we perform a detailed trademark search to identify conflicts, which is essential for building a strong case.
- Document Preparation: Our experts assist in preparing all necessary documents for filing the trademark opposition, ensuring accuracy and compliance with legal requirements.
- Efficient Filing: We handle the entire filing process, submitting the opposition to the Trademark Registry on your behalf, streamlining the process and ensuring timely submission.
- Timely Updates: Throughout the process, we provide on time regular updates to keep you informed about the progress of your trademark opposition.
- Abandonment of Opposition: Failure to submit a counter-reply or supporting documents on time may lead to the abandonment of the opposition, allowing the trademark application to proceed.
Difference between Trademark Objection and Trademark Opposition
| Trademark Objection | Trademark Opposition |
|---|---|
| A Trademark Examiner issues an objection to the trademark. | A trademark faces opposition from a third party. |
| No fees are required. | Fees must be paid when submitting a reply to the opposition. |
| A reply must be submitted within one month. | A reply is due within three months, with a possible one-month extension. |
| Trademark objection is part of the registration process. | Trademark opposition is a separate process. |
Documents Needed for a Trademark Opposition
Signed Evidence
Sales Invoice
Advertisement Copies
Product Images
Government Registration Certificate
Social Media Accounts Screenshot
Letter Head Copy
Visiting Card
FAQs
What exactly is trademark opposition?
Trademark opposition is a legal challenge against the registration of a trademark, initiated during its four-month publication period in the official government journal. This allows any member of the public to object to the trademark if they believe it infringes on their rights or is otherwise unsuitable for registration.
Who is eligible to file a trademark opposition in India?
Any individual or entity, including customers, competitors, or any member of the public, can oppose a trademark application. The opposer does not need to have a prior registered trademark or a direct commercial interest in the matter.
Where should one file a trademark opposition?
You can perform a trademark search by using online search tools provided by trademark registries or consulting with a trademark professional. This involves checking existing trademarks to see if your desired mark is already registered or similar to another mark.
What are the grounds for opposing a trademark?
Grounds include similarity to an existing trademark, lack of distinctiveness, descriptiveness, bad faith, customary usage, likelihood of confusion, illegality, prohibition under the Emblem and Names Act, 1950, and potential to offend religious sentiments.
What is the first step in initiating a trademark opposition?
The first step is to file a notice of opposition using Form TM-O within four months of the trademark’s publication in the journal.
Customer Reviews for Trademark Search
10 months ago
"Aksh IP Associates made the trademark registration process incredibly smooth and hassle-free. They were thorough, responsive, and kept me informed at every step. Highly recommend their services!"
11 months ago
"When my trademark faced an objection, Aksh IP Associates stepped in and turned the situation around. Their strategic approach and deep understanding of trademark law were instrumental in overcoming the objection."
5 months ago
"The trademark hearing process can be daunting, but Aksh IP Associates provided excellent legal support. They guided me through the entire process and ensured my case was well-presented."
7 months ago
"I was nervous about registering my trademark, but Aksh IP Associates made it so easy. Their expertise and customer service were outstanding. I felt confident throughout the entire proces