Within the jurisdiction of India, the statutory framework, specifically the Trademarks Act of 1999, defines the procedural requisites for the registration of trademarks. For those assuming the role of a trademark proprietor, the initial essential entails the submission of an application to the distinguished Registrar of Trademarks, commonly denominated as the ‘Registrar.’ Following the application, the Registrar, in due course, accords due consideration to your trademark by featuring it in the esteemed trademark journal.
A noteworthy part of this process entails the opportunity for opposition of trademark registration by initiating an opposition against the recently spotlighted trademark within the pages of the Trademark Journal. This opposition of trademark registration, meticulously submitted, makes its way to the Registry of Trademarks. Upon the registry’s reception of any opposition, a judicious hearing is convened to deliberate upon and adjudicate on the subject of opposition of trademark registration.
Opposition of Trademark Registration Under Section 21
In accordance with the provisions of the Trademarks Act, 1999, the initiation of opposition of trademark registration is governed by Section 21. This section explicitly grants the right to any individual, including companies, individuals, trusts, and partnership firms, to file a notice of opposition to the Registrar. Consequently, any aggrieved third party possesses the legal authority to raise objections against the registration of a trademark.
Grounds for Opposition of Trademark Registration
Trademark opposition can be based on various grounds as stipulated by the relevant legal provisions. The following are the key grounds on which a person can file opposition to trademark registration:
1. Similarity to Existing Trademark:
The trademark in question is identical or bears a significant resemblance to an already registered trademark.
2. Descriptiveness:
The trademark is of a descriptive nature, lacking distinctive characteristics.
3. Lack of Distinctive Character:
The trademark is deemed to be devoid of distinctive character.
4. Customary Usage:
The trademark is customary in the current language or established practices of business.
5. Bad Faith Registration:
The application for trademark registration is suspected to be made in bad faith.
6. Legal Prohibitions:
The mark is either prevented by law or is contrary to existing legal provisions.
7. Likelihood of Confusion:
The trademark is likely to cause confusion or deceive the public.
8. Religious Sensitivity:
The trademark contains elements likely to hurt the religious feelings of any section or class of people.
9. Prohibition under Emblem and Names Act, 1950:
The trademark is prohibited as per the provisions of the Emblem and Names Act, 1950.
Process for Opposition of Trademark Registration
The Trademark Opposition Process involves the mentioned steps:
1. Notice of Trademark Opposition:
Any interested party has the right to file a trademark opposition with the Registrar within four months from the date of the advertisement of the registration application in the trademark journal. This is done by submitting a notice in Form TM-O along with the required fees. The notice should include details of the trademark application, information about the opposing party, and the grounds of opposition. The Registrar is responsible for serving a copy of the notice of opposition to the applicant.
2. Counterstatement for Notice of Trademark Opposition:
Upon receiving the notice of opposition, the applicant must file a counterstatement with the Registrar in Form TM-O within two months. The counterstatement should present the applicant’s facts regarding the opposition. Failure to file a counterstatement within the stipulated time will result in the Registrar considering the trademark registration application as abandoned, leading to non-registration.
3. Evidence For and Against Trademark Opposition:
a. Evidence by Opposing Party:
The opposing party is required to provide evidence supporting the notice of opposition within two months of receiving the copy of the applicant’s counterstatement. All evidence must be sent to the applicant and the Registrar.
b. Evidence by Applicant:
Upon receiving the evidence from the opposing party, the applicant has two months to file evidence in support of the trademark registration application. The applicant must send copies of the evidence to both the Registrar and the opposing party.
c. Further Evidence by Opposing Party:
The opposing party has the opportunity to submit further evidence within one month of receiving the evidence copies from the applicant. This additional evidence must be submitted to both the Registrar and the applicant.
4. Hearing and Decision Concerning Trademark Opposition:
The Registrar schedules a hearing after receiving evidence from both parties. If the opposing party is absent on the hearing date, the opposition is dismissed, and the trademark is registered. If the applicant is not present, the application is treated as abandoned. The Registrar considers written arguments submitted by both parties.
After hearing both parties and reviewing the evidence, the Registrar decides whether to proceed with trademark registration or reject the application. The decision is communicated in writing to both parties at the provided addresses.
5. Conclusion of the Trademark Opposition Process:
If the Registrar decides in favour of the applicant, the trademark is registered, and a registration certificate is issued. If the decision favours the opposing party, the trademark registration application is rejected, concluding the process for the opposition of the trademark registration.
Final Thoughts
The opposition of trademark registration is a decisive legal process designed to safeguard the integrity of the trademark system. With defined procedures and timelines, this mechanism allows any concerned party to raise objections based on various grounds such as similarity, descriptiveness, and bad faith. The evidentiary stage enables a comprehensive examination of claims, ensuring a fair hearing for both the applicant and the opposing party. The Registrar’s ultimate decision, communicated in writing, dictates the fate of the trademark registration. This stringent and transparent process contributes to maintaining the exclusivity and distinctiveness of registered trademarks, thereby upholding the credibility of the intellectual property rights.
