Introduction
Trademarking your brand is an imperative step towards attaining the exclusive rights over your mark and milestone for a reputable business. Trademark registration can be acquired by filing an application to the trademark registry. Thereafter, the registrar will examine the application and, if satisfied, will accept the application and publish it in a trademark journal. Once the registration process has been accomplished, the mark is available for the general public for filing an opposition against such a mark by the earlier registered or prior user of the trademark based on objections under Sections 9 and 11 of the Trade Marks Act, 1999. The aim of opposing a trademark is clearly protecting the earlier registered trademarks and creation of likelihood of confusion amongst the public.
Relevant Provisions
Section 21 of the Trade Marks Act, 1999, deals with the opposition of the registration of a trademark and provides that any person can file a notice of opposition along with the prescribed fee and in a prescribed manner to the registrar within 4 months from the date of advertisement and re-advertisement of the application of registration. Subsection 2 further provides that a copy of the opposition notice will be served to the applicant by the Registrar, and in response to it, the applicant shall submit a counter-statement of the grounds supporting his application to the Registrar in the prescribed format within two months of receiving the copy of the notice of opposition as per Rule 44 of the Trademark Rules, 2017; otherwise, the application will be considered abandoned.
Furthermore, evidence on which the opponent and applicant may rely is served to the registrar in accordance with Rule 45 and Rule 46 of the Trade Mark Rules, 2017 (TM Rules), reviewing which the registrar may give the opportunity to the parties to be heard and thereupon decide whether the registration should proceed further or shall be cancelled.
Ground of Opposition to Registration
a. The trademark is devoid of distinctive character. b. The trademark is descriptive in nature. c. The trademark is identical or similar to an already existing registered trademark. d. The trademark is customary in the present language or the established practices of business. e. The application for trademark registration is made in bad faith. f. The mark is prevented by law or contrary to the law. g. The trademark is likely to cause confusion or deceive the public. h. The trademark contains matters likely to hurt the religious feelings of any section or class of people. i. The trademark is prohibited as per the Emblems and Names Act, 1950. j. Trademark Opposition Procedure
1. Opposition Notice
Any person can file for trademark opposition to the Registrar by filing a notice through Form TM-O along with the prescribed fee, i.e., Rs. 2700, within 4 months from the date of advertisement of the registration application in the trademark journal.
2. Counter-statement for Notice of Opposition
In response to the opposition notice, the applicant is required to serve a counterstatement to the Registrar in the Form TM-O within 2 months from the date of receiving a copy of the opposition notice. In case the counter statement is not served within the given time period, the application will be considered abandoned.
3. Evidence of Parties
The opponent will submit the evidence supporting the notice of opposition as per Rule 45 of the TM Rules in less than 2 months from receiving the counterstatement to the Registrar and the Applicant, and in response the Applicant shall submit their evidence supporting the trademark application within 2 months from receiving the copy of evidence from the opponent as per Rule 46 of the TM Rules. The opponent has the opportunity, as per Rule 47 of the TM Rules, to file further evidence within 1 month from receiving the copy of evidence from the applicant.
4. Hearing and Outcome of the Opposition
After the receipt of evidence by both the parties, the registrar will serve notice for the hearing to both the parties. Thereupon, after hearing both parties and considering the evidence, the Registrar will decide whether to proceed with the trademark registration or reject the trademark registration application. If the registrar rules in favor of the applicant, the trademark gets registered, and a certificate is issued. However, the trademark registration application is denied if the decision is in the opposing party's favor.
Conclusion
Opposing a trademark application is an imperative opportunity to ensure the transparency and fairness in the registration of the trademark. The trademark opposition procedure in India makes it certain that the registration is granted to the deserving trademarks. It facilitates participation of the common public and prevents conflicting trademarks from coexisting in the market. Timely adherence to timelines and filing requirements is crucial for effective case presentation.
India: +91-1141 8355 50