By - King Stubb & Kasiva on July 31, 2023
Trademark Opposition is defined as the formal objection raised by a third party against the registration of a trademark application. The main objective of opposing a trademark registration is to safeguard the rights of an existing registered trademark holder, preventing them from facing infringement issues due to a newly registered trademark that might be similar or deceptively similar.
Section 21 of the Trademarks Act, 1999 enables any person to file a trademark opposition within the prescribed time limit. It's crucial to adhere to this timeline because if the opposition is not lodged within the specified period, it becomes invalid and cannot be raised later. Consequently, the Registrar will proceed with the registration of the trademark if no opposition is filed within the stipulated time.
During the period of 4 months after the publication of a trademark in the Trademarks Journal, any individual can oppose the trademark application in India by submitting a Notice of Opposition using Form TM-O, along with the prescribed fee of INR 2700 per class.
The Notice of Opposition must include crucial information about the opposing party, the reasons for opposing the trademark, and specific details of the application against which the opposition is being raised. Once the notice is received, the Registrar will proceed to issue a notice to the trademark applicant.
After the review, the Registrar serves a copy of the notice of opposition to the applicant of the trademark application within three months from the date of receipt. Then, the opposition proceeds to the stage where the applicant files the Counter-Statement.
Upon receipt of a Notice of Opposition, the applicant has a statutory deadline of two months to file a counter-statement. The counter-statement should be submitted using Form TM-O and must be accompanied by the prescribed fee. It is important to note that there is no provision for an extension to file a counter-statement. Therefore, if the applicant fails to submit the counter-statement within the two-month period from the receipt of the Notice of Opposition, their application will be considered abandoned.
As per current practices, the official fee for filing a counter-statement is payable irrespective of the number of classes that have been opposed in a single Notice of Opposition. This means that even if the opponent files an opposition against multiple classes of the same application under one Notice of Opposition (resulting in a single opposition number), the opponent would still be required to pay an official fee for each class opposed. On the other hand, the applicant would only need to incur the official fee for their application, regardless of the number of classes opposed.
The counter-statement includes the following details: -
Once the applicant submits the counter-statement, the registrar will conduct a review. If all conditions are fulfilled, a copy of the counter-statement will be served to the opponent within two months from the date of receipt.
After receiving the counter-statement from the applicant, the opponent has a period of 2 months to submit evidence in support of their opposition. This evidence is typically provided in the form of an affidavit. If the opponent chooses not to present any additional evidence and instead intends to rely solely on the facts already stated in the notice of opposition, they must inform both the registrar and the applicant in writing. Failure to do so will result in the notice of opposition being deemed abandoned.
Similarly, the trademark applicant is also required to furnish evidence in support of their application to the Registrar within 2 months of the receipt of the opponent's evidence or intimation. If the applicant decides not to present any further evidence and wishes to rely on the facts already stated in their counter-statement, they must inform both the Registrar and the opponent in writing. Failure to provide this notification will lead to the application being considered abandoned.
After the submission of evidence from both parties, the opponent will be given an additional opportunity to provide any further evidence within one month of the receipt of evidence from the applicant. If any documents are in a language other than Hindi or English, they must be translated into Hindi or English and submitted to the Registrar. A copy of the translated document should also be provided to the opposing party.
After submitting all the evidence by both parties, the Registrar will issue a notice to inform them of the first date of the hearing. The hearing date will be scheduled at least one month after the date of the first notice. During the hearing, both parties will be given an equal opportunity to present their arguments and respond to the opposing party's arguments.
If any party needs to request an adjournment of the hearing with a valid reason, they can submit the form TM-M along with the prescribed fee at least 3 days before the scheduled date of the hearing. Each party can request a maximum of two adjournments, and the duration of each adjournment must not exceed 30 days.
Any party who is involved in the hearing can request a postponement by filling in Form TM-M and paying a fee of Rs. 900. If the reason provided for the adjournment is deemed acceptable by the Registrar, the hearing will be rescheduled to the next available date.
Upon examining all the written arguments, if provided by any party, and after conducting a hearing with both parties, the Registrar will convey their decision in writing to all involved parties. In case any of the parties is absent on the adjourned hearing date at the specified time, and then their application or opposition will get abandoned. In such a case, the Registrar will proceed with the matter accordingly.
The opposition process serves as a critical mechanism to ascertain the eligibility of a trademark for registration. By considering all relevant factors, it ensures that only valid trademarks, free from potential conflicts with existing rights, are ultimately granted registration. This process safeguards the interests of both the applicant and the opposing parties, maintaining the integrity and fairness of the trademark registration system.
Yes, anyone can file a trademark opposition, but it is more common for trademark owners with similar marks to initiate opposition proceedings.
If the opposition is filed after three months but before the expiration of the fourth month from the trademark's publication in the trademark journal, it must be accompanied by a request for an extension.
The opposition notice can be filed within three months from the date of the trademark's publication in the trademark journal. It can be extended by one month.