Introduction

Filing a trademark opposition triggers a structured legal process that determines whether the trademark will proceed to registration or face rejection. Understanding what happens after opposition is filed is crucial for applicants and opponents alike. This guide outlines the steps following trademark opposition and how to navigate them effectively.

Key Stages After Trademark Opposition

1. Notice of Opposition

Once a third party files a notice of opposition with the Trademark Registry, the applicant receives an official notification. This notice outlines the grounds of opposition and the details of the opposing party.

2. Filing of Counter-Statement

The applicant must respond by filing a counter-statement within two months from the date of receiving the notice of opposition. Failure to file a counter-statement results in the abandonment of the trademark application.

3. Evidence Submission by Opponent

After the counter-statement is filed, the opposing party must submit evidence supporting their claims. This evidence typically includes:

• Prior trademark registrations

• Proof of use of the existing trademark

• Marketing materials and sales records

4. Evidence Submission by Applicant

Once the opponent submits evidence, the applicant must file evidence supporting their trademark application. This evidence can include:

• Proof of prior use of the trademark

• Invoices, advertisements, and promotional materials

• Customer testimonials and sales records

5. Rebuttal Evidence by Opponent

The opponent has the right to submit rebuttal evidence, challenging the applicant’s claims. This stage allows both parties to strengthen their cases with additional proof.

6. Hearing Stage

After the exchange of evidence, the Trademark Registrar schedules a hearing. Both parties present their arguments, and the Registrar evaluates the evidence and submissions.

7. Decision by the Registrar

Following the hearing, the Registrar delivers a verdict based on the merits of the case. The decision can result in one of the following outcomes:

• Trademark Registered: If the opposition is unsuccessful, the trademark proceeds to registration.

• Trademark Rejected: If the opposition succeeds, the trademark application is rejected.

• Partial Acceptance: In some cases, the Registrar may approve the trademark with specific conditions or limitations.

Post-Decision Options

Both parties have the right to appeal the Registrar’s decision if they are dissatisfied with the outcome. The appeal can be filed with the Intellectual Property Appellate Board (IPAB) or the appropriate High Court.

Conclusion

Understanding the stages following trademark opposition helps applicants and opponents navigate the process effectively. Timely responses, strong evidence, and expert representation are key to achieving a favorable outcome.

How ASK ASSOCIATES Can Help

ASK ASSOCIATES offers comprehensive support in navigating trademark opposition proceedings. Their expert team ensures timely responses, strong evidence preparation, and effective representation during hearings, simplifying the process for clients and enhancing the chances of a successful trademark registration.