Trademark Opposition
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About Trademark Opposition
Trademark opposition in India comes at a stage after the registrar has approved the trademark application on the grounds of distinctiveness and published the third-party opposition’s trademark in the journal.
Who can oppose a Trademark Application in India?
Any person can oppose a trademark application filed by an applicant for various reasons during the trademark application stage.
According to Section 21 of the Trademark Act, ‘any person’ can oppose a trademark, irrespective of his commercial or personal interest in the matter.
A trademark can be countered by filed by a customer, member of the public or competitor, or any other person. Also, the person filing the trademark opposition needs to be a prior registered trademark owner.
Who decides whether the trademark should be abandoned or registered?
After a trademark opposition is filed, both parties need to conclude whether the trademark should be abandoned or registered. However, 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 defending the trademark lies in the trademark registrant’s hands.
Trademark Opposition Process
What is the procedure for the trademark opposition?
Opposition Notice
Any person can file a notice of opposition on a trademark that appears on the trademark journal within four months from the first date of appearance.
It must be filed on Trademark Form 5 in the prescribed manner and filed with applicable fees.
After the trademark opposition notice is filed with the trademark registrar, the registrar would serve a copy of the trademark opposition notice to the trademark applicant. Within two months of receipt of the trademark, opposition notices the trademark applicant must file the counter statement.
If the trademark applicant fails to file the counter statement within the specified period, the trademark application shall be “abandoned.” However, it is necessary to understand the trademark registration status.
After the evidence filing stage is over, the registrar shall send notices to both parties stating the date of hearing, which shall be at least one month after the date of the first notice. The hearing is based on the notice of opposition, the counter-statement filing, and the filed evidence. The registrar hears the matter by the registrar, and if any of the parties does not show up for the hearing, the registrar will rule against him.
Based on the review of the evidence submitted and the hearing of both the parties, the registrar decides whether the opposition was successful at doing so and, in turn, determines whether the trademark should be registered or not. However, the party aggrieved by the registrar’s decision may challenge the same by filing an appeal before the Intellectual property Appellate Board.
Grounds for Trademark Opposition
- The trademark is identical or similar to an already existing registered trademark.
- The trademark is descriptive in nature.
- The trademark is devoid of distinctive character.
- The trademark is customary in the present language or the established practices of business.
- The application for trademark registration is made with bad faith.
- The mark is prevented by law or contrary to the law.
- The trademark is likely to cause confusion or deceive the public.
- The trademark contains matters likely to hurt the religious feelings of any section or class of people.
- The trademark is prohibited as per the Emblem and Names Act, 1950.
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Trademark Opposition FAQ's
An individual who thinks that his or her brand name or the reputation of the company will be damaged by the registration of a mark can raise a trademark opposition.
The Opposition notice can be filed within three months and can be extended by one month from the date which the trademark was published in the trademark journal.
In case the trademark opposition is filed after three months but before four months expiry period the notice of opposition should be accompanied by a request for extension by providing a sufficient reason for the delay in the same.
Anyone can file for trademark opposition, but usually, an opposition is raised by a person who is the owner of the trademark or a mark that deals with similar goods and services.
A trademark opposition can be raised even if the trademark application is pending or already in use. The common law of rights prevents any person from selling goods and services.
Generally, a power of attorney is to be submitted at the time of filing the opposition notice. If the POA is not available it can be filed later on too.
The opposition notice should be filed at the trademark registry where conflicting mark application has been filed.