You are currently viewing Trademark Opposition

Trademark Opposition

Loading

Trademark Opposition

Trademark opposition is a legal process that grants individuals the right to challenge the registration of a particular trademark. It serves as a crucial safeguard for trademark owners, competitors, and social organizations to protect their rights and prevent consumer confusion. By opposing a trademark, concerned parties can raise objections if they believe that the mark in question infringes upon their existing mark or if it shares essential features that may mislead consumers.

Who is eligible to oppose a Trademark?

The eligibility criteria for filing a trademark opposition are defined in Section 21 of the Trademarks Act. According to this provision, any person can oppose a trademark registration. This includes:

  1. Trademark Holders: Existing trademark holders who believe that registering a particular mark will negatively impact their mark and the rights they hold.
  2. Competitors: Competitors in the same industry who anticipate that registering a new mark may create unfair competition or confusion among consumers.
  3. Social organizations or entities: Social organizations or entities that have a vested interest in the well-being of companies and wish to protect the trademarks of existing businesses from potential infringement.

Trademark Opposition Process

The trademark opposition process involves several stages that ensure a fair and comprehensive assessment of the opposition. Here are the key steps involved:

  1. Opposition Notice: Within four months of the publication of the applicant’s trademark in the trademark journal, the opposing party can file an opposition notice. This notice must state the grounds for opposition and be accompanied by the prescribed fees.
  2. Reply by the Applicant: Upon receiving the opposition notice, the trademark officer forwards a copy to the trademark applicant. The applicant must then submit a reply within two months, addressing the concerns raised by the opposition. Failure to respond within the specified timeframe can result in abandoning the trademark registration process.
  3. Hearing: After receiving the applicant’s reply, the registrar of trademarks schedules a hearing. Before the hearing, the registrar notifies both parties about the submission of evidence. The hearing typically takes place one month before the final decision is made. All concerned parties must attend the hearing and effectively present their arguments and evidence.
  4. Appeals: If any parties involved are dissatisfied with the decision made during the opposition process, they can file an appeal. Previously, appeals were addressed by the Intellectual Property Appellate Board (IPAB), but it has since been abolished. Appeals can now be made in the High Court or commercial courts, providing an avenue for further review and resolution.

Conclusion

Trademark opposition serves as a valuable legal tool to protect the rights of trademark owners and maintain clarity in the marketplace. It enables individuals and entities to challenge the registration of a trademark that they believe infringes upon their rights or causes confusion among consumers. By utilizing the trademark opposition process, stakeholders can uphold the integrity of their trademarks and ensure fair competition in the business landscape.

G.Durghasree B.A.B.L (Hons)

G Durghasree B.A.B.L (Hons) is a registered trademark attorney with extensive experience as an Advocate for a period of 8 years. She possesses expertise in trademark law, including trademark filing and trademark hearings. Additionally, she is skilled in contract drafting and reviewing, providing legal advice and opinions, particularly in the areas of Company Law, Insolvency and Bankruptcy Code (IBC), and Goods and Service Tax Law (GST). Her experience encompasses both litigation and non-litigation aspects of these laws.