Once the registry accepts a trademark application, it undergoes a crucial step – publication in the government journal for four months. During this phase, any member of the public can raise an opposition against the trademark. This stage is significant in determining whether the trademark can proceed toward registration or if valid objections need to be addressed. ASK Associates offers expert assistance and guidance to navigate the trademark opposition process, ensuring a seamless and effective resolution.

Trademark Opposition Overview

Under the Trademarks Act of 1999, trademarks can be registered in India. Trademark owners must submit their applications to the Registrar of Trademarks. Once the Registrar reviews the application, it is published in the official trademark journal. Any individual can challenge the registration of a trademark once it’s listed in the Trademark Journal by directing their opposition to the Trademark Registry where the original application was made. If any opposition arises, the trademark registry will hold a hearing to resolve the issue.

The procedures and guidelines for trademark opposition are outlined in the Trademarks Act, 1999, and the Trade Marks Rules, 2017.

Initiation of Trademark Opposition – Eligibility

According to Section 21 of the Trademark Act, ‘any person’ can oppose a trademark, irrespective of their commercial or personal interest. A trademark can be opposed by a customer, member of the public, competitor, or any other person. The person filing the trademark opposition does not necessarily need to be a prior registered trademark owner. Once a trademark opposition is filed, both parties must determine whether the trademark should be abandoned or registered. 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 hands of the trademark registrant.

Grounds for Trademark Opposition

Indian trademark law does not provide specific grounds for opposition, but various reasons can be cited:

• The trademark is similar or identical to an earlier or existing registered trademark.
• The trademark lacks distinctive character.
• The trademark is descriptive.
• The trademark registration application is made in bad faith.
• The trademark is customary in the current language or in the established practices of a business.
• The trademark is likely to deceive the public or cause confusion.
• The trademark is contrary to the law or prevented by law.
• The trademark is prohibited under the Emblem and Names Act, 1950.
• The trademark contains matters likely to hurt any class or section of people’s religious feelings.

Trademark Opposition Procedure

The process of trademark opposition includes the following steps:

Initiating a Trademark Opposition

An individual wishing to oppose a trademark can submit their concerns to the Registrar within four months from the date the registration application was advertised in the trademark journal. This is done using Form TM-O, accompanied by the necessary fee. The opposition notice should detail the trademark registration application, information about the opposing party, and the reasons for opposition. Within three months of receiving this, the Registrar will forward the applicant a copy of the opposition notice.

Stage One: Responding with a Counterstatement

Upon receiving the opposition notice, the applicant has two months to submit a counterstatement using Form TM-O, clarifying their stance. The Registrar will provide the opposing party with the applicant’s counterstatement within two months. If the applicant doesn’t respond within the specified two months, their trademark registration application is deemed abandoned, halting the registration process.

Stage Two: Presenting Evidence in the Opposition Process

The opposing party must present evidence backing their opposition to the Registrar within two months of receiving the applicant’s counterstatement. This evidence should also be shared with the applicant. Subsequently, the applicant has two months to submit evidence supporting their application after receiving the opposition evidence. This evidence must be shared with both the Registrar and the opposing party. If needed, the opposing party has another month to submit further evidence after receiving the applicant’s evidence, which must also be shared with the applicant and the Registrar.

Hearing and Determining the Outcome of the Opposition

The Registrar schedules a hearing after the exchange of evidence, notifying both parties. If the opposing party is absent, their opposition is dismissed, leading to the trademark’s registration. Conversely, if the applicant is absent, their application is considered abandoned and dismissed. All written arguments provided by both sides will be taken into account. After deliberation, the Registrar decides whether to register the trademark or dismiss the application, and this decision is communicated in writing to both parties.

Conclusion and Final Steps in the Trademark Opposition Procedure

If the Registrar rules in favor of the applicant, the trademark gets registered, and a certificate is issued. If the decision favors the opposing party, the trademark registration application is denied.