The process of trademark opposition in India is a judicial procedure that happens after a brand name application has been documented. It gives third parties the right to challenge a trademark registration if they believe it violates their rights or if they have other valid reasons to do so.
The proceedings involve the submission of legal arguments, evidence, and documentation by both parties following the filing of an opposition. After that, the trademark office or a specialised tribunal, such as a trademark opposition board or a court, will weigh the evidence and make a decision regarding the opposition. The trademark application may be denied or subject to certain restrictions or modifications if the opposition is successful. In this blog, we will look in detail about the process of trademark opposition in India and how to easily go through the process.
Eligibility for Trademark Registration in India
A competitor, a customer, a member of the general public, or any other individual can file a counterclaim for a trademark. The person who files the trademark opposition must already be the registered trademark owner.
After an opposition to a trademark is filed, both parties must decide whether the trademark should be abandoned or registered. Anyone who believes that the published mark might cause public confusion, can file the opposition, but the trademark registrant must defend the trademark.
Grounds For Trademark Opposition
Although there are no specific grounds of opposition by the Indian Trademark Law, still there can be few reasons a trademark opposition may be opposed. Such reasons are-
- If the trademark looks similar to an already existing trademark.
- If the trademark is devoid of different characters.
- The trademark is sort of descriptive
- If the trademark registration has been done with bad faith.
- If the trademark can deceive the public or can cause confusion.
- If the trademark is in any sense contrary to law or prohibited by law.
- The Emblem and Names Act, 1950 prohibits the trademark.
- If due to the trademark, there can be a massive hit to the feelings of a specific group of religious people.
Process for Initiating Trademark Opposition in India
To commence the process of trademark opposition in India, these steps must be followed:
Time Limit for Filing:
Within four months from the date of advertisement or re-advertisement of the application in the Trademark Journal, any individual can initiate trademark opposition proceedings.
Filing Notice of Trademark Opposition:
A notice of trademark opposition must be submitted. This notice is typically in the format of Trademark Form 5 as prescribed. Ensure that it is accurately completed and filed along with the requisite fees.
Essential Contents of Notice:
- Application Details: Include information about the application against which the trademark opposition is being lodged. This entails the trademark registration application number and the specific class of goods or services for which the application was filed.
- Applicant’s Name: Clearly state the name and address of the party initiating the trademark opposition.
- Grounds of Opposition: Specify the grounds on which the opposition is based. These reasons may encompass conflicts with existing trademarks, confusion with prior trademarks, or other relevant concerns.
4. Submission of Trademark Opposition Notice:
- Ensure that the notice of trademark opposition is submitted in the prescribed manner, adhering to the relevant format and guidelines.
- Accompany the notice with the applicable fees.
Detailed Process of Trademark Opposition in India
The process of trademark opposition in India involves many steps. Given below are the detailed steps in the process of trademark opposition in India:
Step 1: Notice of Trademark Opposition
In the first step of the process of trademark opposition in India, the process begins with the filing of a notice of opposition by any interested party within four months of the trademark application’s advertisement in the trademark journal. This notice is submitted using Form TM-O along with the required fees. The notice of opposition must detail the application being challenged, provide information about the opposing party, and outline the grounds for opposition. The Registrar then serves a copy of this notice to the applicant within three months.
Step 2: Counterstatement for Notice of Trademark Opposition
Upon receiving the notice of opposition, the applicant has a two-month window to submit a counterstatement to the Registrar using Form TM-O. This counterstatement presents the applicant’s version of the facts and circumstances in response to the opposition. The Registrar then forwards a copy of the counterstatement to the opposing party within two months.
Step 3: Evidence for and Against Trademark Opposition
The opposing party, within less than two months of receiving the applicant’s counterstatement, presents their supporting evidence for the opposition. Both the Registrar and the opposing party receive copies of this evidence. The opposing party can further submit additional evidence within one month of receiving the applicant’s evidence. This evidence is shared with both the Registrar and the applicant.
Step 4: Hearing and Decision Concerning Trademark Opposition
After the evidence exchange, the Registrar schedules the first hearing date and notifies both parties. If either party is absent on the hearing date, the Registrar’s decision reflects the absence. In case the opposing party is absent, the opposition is dismissed, and the trademark moves forward for registration. Following the hearing, the Registrar evaluates the evidence and arguments to determine whether the trademark should be registered or the application rejected. The Registrar’s decision is communicated in writing to both parties.
Step 5: Conclusion of the Trademark Opposition Process
In the final step of the process of trademark opposition in India, if the decision of the Registrar is in favour of the applicant, the trademark is registered and a trademark registration certificate is issued. But if the decision favours the opposing party, the trademark application is rejected. This concludes the trademark opposition process, where a structured framework ensures transparency and a just resolution for all parties involved.
Final Thoughts
The process of trademark opposition in India serves as a shield for trademark proprietors, allowing them to safeguard their pre-existing rights and obstruct the registration of trademarks that might clash with their own. Trademark holders possess the capacity to uphold the uniqueness and significance of their trademarks by challenging the registration of a trademark that holds the potential to create confusion or erosion of their brand’s impact.
Trademark opposition helps stop trademark from being registered and used that violate the rights of others. Individuals and businesses can challenge marks that are similar to their own by opposing a trademark application, potentially avoiding costly and time-consuming litigation in the future.
