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What is Trademark Opposition?

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Trademark Opposition in India

In India, trademark opposition is a crucial step in the process of trademark registration. The Trademarks Act of 1999 lays down the requirements for trademark registration, and understanding the opposition process is essential for both trademark owners and those who wish to oppose a registration.

Trademark Registration Requirements

To register a trademark in India, the owner of the mark must apply to the Registrar of Trademarks, commonly referred to as the “Registrar.” Once the application is received, the Registrar publishes a trademark advertisement in the trademark journal.

Who Can Oppose a Trademark Registration?

Anyone who wishes to oppose the registration of a trademark that has been published in the Trademark Journal can do so. The opposition is submitted to the Registry of Trademarks.

Grounds for Trademark Opposition:

The following are the grounds on which a trademark registration can be opposed:

  1. The trademark is identical or similar to an existing registered trademark.
  2. The trademark is descriptive in nature.
  3. The trademark lacks distinctive character.
  4. The trademark is customary in the current language or business practices.
  5. The application for trademark registration is made in bad faith.
  6. The mark is prevented by law or is contrary to the law.
  7. The trademark is likely to cause confusion or deceive the public.
  8. The trademark contains elements likely to hurt the religious feelings of a particular group.
  9. The trademark is prohibited under the Emblem and Names Act of 1950.

Trademark Opposition Process

The trademark opposition process involves the following steps:

  1. Filing the Opposition: Any person can oppose a trademark registration by submitting a notice of opposition in Form TM-O, along with the required fees, within four months of the registration application’s advertisement in the trademark journal.
  2. Notice of Opposition: The notice should include details of the trademark registration application, information about the opposing party, and the grounds for opposition.
  3. Serving the Notice: The Registrar must serve a copy of the notice of opposition to the applicant (the person who filed the trademark registration application) within three months of receiving the opposition notice.
  4. Counterstatement: The applicant must file a counterstatement to the notice of opposition in Form TM-O within two months of receiving the notice, presenting their side of the facts.
  5. Exchange of Documents: The Registrar will provide the opposing party with a copy of the counterstatement within two months of receiving it.
  6. Consequences of No Counterstatement: If the applicant fails to file a counterstatement within the stipulated time, the Registrar will consider the trademark registration application abandoned and will not proceed with the registration.
  7. Supporting Evidence: The opposing party should provide evidence supporting their notice of opposition to the Registrar within two months of receiving the counterstatement from the applicant, also sharing these documents with the applicant.
  8. Applicant’s Evidence: Upon receiving the evidence from the opposing party, the applicant must file their evidence in support of the trademark registration application within two months, sending these documents to both the Registrar and the opposing party.
  9. Hearing Notice: After both parties have submitted their evidence, the Registrar will schedule a hearing, notifying both parties of the date.
  10. Absence on Hearing Date: If the opposing party is not present on the hearing date, the opposition will be dismissed, and the Registrar will proceed with the registration. Conversely, if the applicant is absent, the application will be considered abandoned, and the Registrar will rely on written arguments submitted by both parties.
  11. Registrar’s Decision: After the hearing and consideration of all evidence, the Registrar will decide whether to approve or reject the trademark registration application.
  12. Communication of Decision: The Registrar will communicate the decision in writing to both parties at the addresses provided.

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.