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Overview
Trademark Opposition is basically filed by a third party who is interested in the trademark application, in as much as its registration is concerned. The third-party files an opposition against the registration of a trademark that has been published in the trademark journal by the TM Registry. After a Trademark application has been accepted to be advertised in the journal, there is a period of 4 months wherein an opposition against the mark could be filed by an interested third party. In case there is no opposition filed within this time period, the trademark is granted acceptance of the registration by the TM Registry.
If there should arise an occurrence of a trademark being opposed, the applicant can file a counter statement against such opposition putting forward its views of why the mark should be registered in the applicant’s name. A trademark opposition is done mostly on two grounds viz. absolute ground(s) for refusal under Section 9 of the Trademark Act or on relative grounds of refusal under Section 11 of the Trademark Act. An individual recording a resistance need not be an enrolled owner of any imprint. Any individual may contradict a brand name, who can be a buyer, client, or an individual from the public prone to utilize the merchandise or profit the administrations. This incorporates people, organizations, association firms, and trusts. Indeed, if at least two people have similar issues against a brand name, they can be combined as rivals. The inspiration driving this is that the Opponent isn’t just speaking to himself however the general population everywhere on the grounds that having two comparative imprints in the market can just bring about disarray.
What Is The Process?
1. Notice of opposition
Once the examiner approves the trademark application, it is published in the trademark journal by the Registry for a period of four months. During this time of four months, any 3rd party can file a notice of opposition against the trademark application. Such notice of opposition is first served to the TM Registry for its perusal and if the registry is convinced with the grounds, the notice is then issued on the Applicant.
2. Counter statement
A counter-statement is basically the reply to the notice of opposition that is filed by a third party against the applicant’s trademark application. A counter-statement is to be filed within 2 months of the receipt of notice of opposition. There is no augmentation on filing a counter Statement, thus on the off chance that it isn’t recorded within two months, the Applicant is regarded to have deserted the Trademark application. Like the opposition notice, a counter-statement is likewise first sent to the Registry for its perusal if convinced, the Registry will at that point serve the counter-explanation on the Opponent.
3. Evidence in support of opposition
After the Applicant has recorded the Counter-Statement against the notice of opposition, the party must document proof supporting its opposition, by the method of an Affidavit, within 2 months (extendable by one month) of the receipt of the counter-statement. The Opponent additionally has an alternative to keep in touch with the Registrar stating that he doesn’t want to record proof yet instead intends to depend on the realities recently expressed in the Notice of Opposition given. In any case, if the proof or the intimation of waiver isn’t informed within two months, at that point the opposition will be considered deserted.
4. Evidence in support of application
The Applicant may accommodate filing of proof, assuming any, in support of its application within two months (extendable by one month) of receipt of the proof of the Opponent. Then again, the Applicant may likewise decide to postpone his entitlement to present any proof.
5. Evidence in reply
Furthermore, the Opponent has the choice of filing extra proof in support of the opposition and because of the Applicant’s proof, within one month (extendable by one month) of receipt of the Evidence by Applicant. This alternative is given to accomplish a type of finality in the proceedings, to counter the proof created by the Applicant.
6. Hearing
The Registrar, in light of the opposition notice, counter-statement, and evidence recorded, may call for a hearing, if required. Within 14 days of the receipt of the notice of hearing by the registrar, both the parties involved are needed to tell their intention to show up in the hearing. Any request for adjournment of the hearing could be filed by either party, not less than 3 days prior to the hearing, in a TM-M form. However, most times such a hearing could be adjourned is twice and the duration of the adjournment should not be more than 30 days in total. As and when agreed by both parties, the hearing is scheduled before the registrar who takes up the arguments and decides on the merit.
7. Registration or rejection
In the event that the Registrar is convinced with the arguments of the applicant and rules in its favor, then such a trademark application is accepted and the mark is registered and registration certificate granted to the applicant. Alternatively, in case of the registry ruling in favor of the opponent, the application stands rejected. However, if any party feels aggrieved with the ruling of the registry, he/she can file an appeal before the Intellectual Property Appellate Board.
Details Required
- Power of Attorney
- Evidence supporting Trademark Registration / Opposition.
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Frequently Asked Questions
1. Who can file the Notice of Opposition?
As per Section 21 of the Trademark Act, 1999 ‘any individual’ can record the notification of the opposition. This includes individuals, organizations, association firms, and trusts. Truth be told, if two or more people have similar issues against a brand name, they can be joined together as adversaries.
2. What is the time period for filing the Notice of Opposition?
According to Section 21 of the Trademark Act, 1999, any individual may document such opposition within 4 months from the date of publication of the trademark by the registry.
3. Do I need to submit a Power of Attorney at the time of filing the Notice of Opposition?
Generally, the power of attorney should be submitted with the application under Section 145 with TM-48. But in case such is not filed at the time of opposition, it can be submitted at a later point within a reasonable time.
4. My Mark is not registered in India; can I file an Opposition based on my pending Application and use?
The TM Registry recognizes common law rights and hence, regardless of whether the registration is in India or elsewhere, a notice of opposition can be filed against any application published in the journal by the registry.
5. Out of the five Trademark registry(s) in India, where can I file the Opposition?
Generally, the notice of opposition is filed in the registry wherein the application of a similar mark has been made.
6. What is the next stage once I file the Notice of Opposition?
Once the notice of opposition is filed, the same is considered by the registry and served on the applicant. The applicant then produces a counter statement against such notice within 2 months. In case of not furnishing a counter-statement, the mark of the applicant shall be dismissed. If the counter statement is filed, then it is served on the opposition party and the process goes on to the evidence stage.
7. What are the timelines to be followed for adducing Evidence by the Parties?
The evidence stage has 2 filings. One is the evidence produced by the opposite party supporting their notice of opposition and the Second is the evidence produced by the applicant supporting their counter-statement. Moreover, if required, the parties can file additional evidence post this or stick to their evidence filed before. The time frame of an evidence filing is two months from the date of counter-statement or two months from the date of receipt of the evidence, as the case may be. The time can be further extended for a period of one month. The additional evidence if filed by the opponent has a time frame of one month and extendable by another month.
8. If I am not able to file the Evidence within the time frame, are there provisions to file Evidence at a later stage?
As per Rule 48 of the Trademark Rules, 2017 if the evidence isn’t furnished within the recommended time it tends to be documented later as ‘additional proof’, which lays on the prudence of the Registrar. Be that as it may, this should be joined by an interlocutory appeal explaining the explanations behind the postponement in the filing of the said evidence and asking for the Registrar’s authorization to excuse the deferral.
9. Once Evidence is submitted by both Parties, what is the next stage of proceeding?
The next stage of proceeding after evidence has been submitted is the hearing stage wherein oral submissions are made by the parties with respect to their contentions. The registrar gives notice of hearing to both parties which have to be acknowledged by both the parties and the date of hearing is generally one month from the receipt of notice of hearing. After hearing both the side, the Registrar issues an order either accepting or rejecting the trademark application. Any party aggrieved with such an order has the right to file an appeal before the Intellectual Property Appellate Board within three months of receipt of the order of the TM Registry.
10. What is the time period for an Opposition to be decided?
Considering the colossal overabundance at the Trademarks Registry, it is hard to appraise the specific time-frame for the finish of the opposition proceeding. The matter for hearing is generally taken upon a seniority basis and hence the pending cases are given priority. Considering the same, the entire process could take up to 3-4 years depending on the number of oppositions received and other technicalities involved.