Trademark Opposition
Section 21 of the Trademarks Act, 1999, provides that any person can file a notice of opposition to the Registrar. This includes companies, individuals, trusts and partnership firms. Thus, any aggrieved third party can raise opposition to trademark registration.
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Trademark Opposition required mandatory
Reasons of Trademark Opposition
- Trademark is descriptive in nature
- Trademark is likely to deceive the public at large and create confusion
- Trademark is same or similar to an existing registered trademark
- Trademark contains matters that is likely to hurt feelings of a class or section of people’s religious feelings
- Trademark is prohibited
- Trademark is devoid of distinctive characters
- Trademark is contrary to the law or prevented by law
Pricing
(Simple & Clear Pricing. No Hidden Charges)
| Government Fee | Rs 0 |
| Professional Fees | Rs 1,459 |
| Goods & Service Tax | Rs 00 |
| Total Cost | Rs 1459 |
What is a Trademark Opposition?
(All you need to know)
Trademark Opposition in India comes at a stage after the registrar has approved the trademark application on the distinctiveness factor and publishes the trademark in the journal for the third-party opposition. Anyone can oppose the published trademark within a period of 3 months which can be extended for a month more (3+1); beginning from the day it was first published. If the mark is opposed, an opposition proceeding is initiated. After which, both the parties involved need to come to a conclusion and the decision is taken. The decision whether the mark can be registered or abandoned would be made. There is no restriction on filing an opposition. Anyone who believes that the published mark might create confusion among the public can file for the opposition while the onus of defending the trademark lies in the hands of trademark registrant.
1. Highly effective remedy for TM owner: Trademark opposition plays a very eminent role as it is a chance for the registered trademark owners to stop any other mark that can hinder/ dilute their brand or cause any possible confusion in the mar
2. Public consultation: As the brand is created through the public popularity and demand, it is very important to consult the public for approval about the registrability of the applied trademark.
Documents required for Trademark Opposition
Following Documents are required :-
- Details of applicant
- It allows the attorney to file the trademark opposition on your behalf
- Affidavit with the basic information about the trademark and its user date and proof of use
- Detailed information about the mark against which the opposition is to be filed, i.e. name and basic grounds for filing the opposition
What is the procedure for Trademark opposition?
Any person can oppose a trademark by giving notice under Form TM – O within four months of publication of a trademark in trademark journal. The trademark opposition notice should contain trademark application, details of opposing party and grounds of opposition. The registrar should serve the notice of opposition to the person who filed trademark registration application, within three months of receiving opposition notice. The trademark opposition process may be broadly divided into four parts:
As mentioned above, any person can file a trademark opposition within four months from the date of its publication in trademark journal. The trademark opposition needs to be filed in prescribed manner with applicable fees.
After receiving the trademark opposition notice, the trademark registrar serves the notice of opposition to the trademark applicant within three months of such opposition. The trademark applicant is required to file a counter statement (reply) within two months from the date of receipt of the trademark opposition notice from the trademark registrar, failing which the trademark will be marked as “abandoned.”
After filing of counter statement, the registrar will send notice of hearing to both the parties mentioning the date of hearing, which shall me minimum one month after the date of such hearing notice. The hearing notice is based on the opposition notice, counter statement and other supporting documents filed as evidence. Both the parties are required to attend the hearing on the given date. In case of non attendance by any party, the registrar may award the decision against the non-attending party. Based on the hearing and the supporting documents submitted in evidence, the registrar decides whether the opposition was successful and determines whether the trademark should or should not be registered.
On receiving the decision from the registrar of trademarks, if a party is aggrieved by the decision of registrar, it may challenge the same by filing an appeal against the decision with the Intellectual Properties Appellate Board.
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Frequently Asked Questions
What is a notice of opposition?
Any individual who thinks his/her brand name or reputation of the company may be damaged in any way by the registration of a certain mark may choose to oppose such registration by filing the notice of opposition
What is the time period for filing the Notice of Opposition?
The notice of opposition can be filed within three months, extendable by one month (3+1) from the date on which the trademark was published in the Trade Marks Journal. If the notice of opposition is filed after three months but before the expiry of four months, then it must be accompanied by a request for an extension by one month, giving sufficient reasons for the delay in filing the opposition
Who can file the Notice of Opposition?
In India, anyone can file for the Trademark Opposition. Usually, it is initiated by a person who is the owner of an earlier trademark or a mark that deals with similar goods/services; or that has a possibility of creating confusion or harm an existing mark can file an opposition, even if its own mark is not registered.
My mark is not registered in India; can I file an opposition based on my pending application and use?
Through a common law of rights of passing off, one can file an opposition even if the Trademark application is pending or already in use if not registered. This law prevents any person from selling his goods/services as that of another and benefiting from it.
What is the next stage once I file the Notice of Opposition?
The next step is taken by the Registry. The registrar serves the copy to the opponent so that they can file a counter statement. This has to be filed within 2 months of the receipt of the notice of opposition. If it is not filed it is believed to be abandoned.
What the plaintiff must establish in a passing off action?
In a case where the notice of opposition is filed on the use of the mark, it is essential to show that the disputed mark or logo has become distinctive and is recognized that of the plaintiff’s goods and services. Hence, any mark that can cause confusion among the consumers cannot be registered as it would harm the already existing users’ business.
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