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TRADEMARK OPPOSITION AND OPPOSITION PROCEDURE IN INDIA

 

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How can a trademark be opposed in India? How to initiate trademark opposition proceedings in India?

 

Period within which Opposition can be filed- The Act prescribes that any person can file notice of opposition against the trademark within a period of four months from the date on which the mark is advertised or re-advertised in the Trade Marks Journal. The Opponent is not required to have an application/registration in India to oppose any trade mark.

 

The grounds on which a trade mark can be opposed are-

  • Absolute grounds of refusal as provided under Section 9 of the Act, i.e. the trade mark not being distinctive or not being capable of distinguishing the goods/services of the Applicant from those of others.

  • Relative grounds of refusal as provided under Section 11 of the Act, i.e. the trade mark being phonetically, visually, conceptually, confusingly and deceptively similar/identical to the Opponent’s trade mark.

  • Other relevant grounds depending on the facts of the matter i.e., the applicants trade mark being well known, copyright, geographical indication etc.

Procedure after filing of Notice of Opposition

  • The Registrar shall ordinarily serve a copy of the notice of opposition on the Applicant of the Trade mark within two months from the date of receipt of the same.

  • Within two months of the receipt of receiving the notice of opposition, the Applicant shall file its counter statement specifying the facts as alleged in the notice of opposition that are admitted by the Applicant.

  • The Applicant can file the counter statement once the notice of opposition is uploaded on the Registry’s website. In such a situation, the Registry will dispensed with the service of the notice of opposition on the Applicant.

  • If the Applicant fails to file its counter statement within the stipulated time, then the Applicant’s Trade mark shall be deemed to have been abandoned for non-prosecution under Section 21(2) of the Act.

  • If the Applicant files the counter statement, the opposition proceeds to the evidence stage.

EVIDENCE STAGE

  • The Registrar shall ordinarily serve a copy of the counter statement on the Opponent within two months from the date of receipt of the same.

  • Within two months of the receipt of the counter statement, the Opponent shall file its affidavit by way of evidence in support of the opposition.

    Or

    The Opponent can rely upon the facts stated in the notice of opposition by writing to the Registrar and the Applicant.

  • If evidence/relying letter is not filed with the statutory period of two months the Opposition will be deemed to have been abandoned.

  • Within two months of the receipt of the affidavit by way of evidence in support of the opposition, the Applicant shall file its affidavit by way of evidence in support of its application along with the exhibit and forward a copy of the same to the Opponent.

    Or

    The Applicant can rely upon the facts stated in the Counter statement by writing to the Registrar and the Opponent.

  • If evidence/relying letter is not filed with the statutory period of two months the Application will be deemed to have been abandoned.

  • Within one month of receiving the affidavit by way of evidence in support of the application, the Opponent shall file its affidavit by way of evidence in reply and deliver a copy of the same including exhibits.

HEARING STAGE

  • Thereafter, hearing is conducted for the opposition matter after hearing the parties and considering the evidence, the Registrar shall decide whether the Trade mark is to be accepted for registration or not. The Applicant/Opponent cannot seek more than two adjournments and each adjournment shall not be more than 30 days. The decision of the Registrar made in the opposition proceedings can be challenged by an aggrieved person by filing a review with the Registrar or an appeal with the Intellectual Property Appellate Board (IPAB).

For more information on Trademark Opposition Procedure in India please write to us at: info@ssrana.com

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