Trademark Opposition & Opposition Procedure in India
Once the trademark is published in the Trademarks Journal, any aggrieved person can oppose its registration by filing a notice of opposition with the Registry.
How can a trademark be opposed in India? How to initiate trademark opposition proceedings in India?
Trademark Opposition Period-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 to the Applicant of the Trade mark within three months from the date of receipt of the same.
- Within two months 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.
- According to the new Trademark Rules, 2017, there are provisions for faster filing of counterstatements. The applicant has the option of filing counter-statements to the opposition being filed against its application in order to expedite the opposition proceedings.
- 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).
- 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 to the Opponent within 2 months from the date of receipt of the same.
- Within 2 months of receiving the counter statement, the Opponent shall file its evidence affidavit in support of opposition or a relying letter with the Trade Marks Registry and shall serve a copy to the Applicant.
- Within 2 months of receiving the Opponent’s affidavit, the Applicant shall file its evidence affidavit in support of application or a relying letter with the Trade Marks Registry and shall serve a copy to the Opponent.
- In reply, the Opponent may file a rejoinder affidavit within 1 month of receiving the Applicant’s affidavit and shall serve a copy to the Applicant.
Hearing Stage
- Thereafter, the matter is fixed for hearing before the Trade Marks Registry and both the parties are notified 1 month prior to the date of hearing.
- After hearing the parties and considering the evidence on record, the Registrar decides whether the Trade Mark is to be accepted for Registration or not and passes an order to this effect.
- However, the aforesaid order can be challenged by filing a review application before the Registrar within 1 month or within a further period of 1 month, if allowed by the Registrar or by filing an appeal before the respective Hon’ble High Court within 3 months from the date of communication of the order.
Trademark Opposition Cost and Procedure in India
Trademark Opposition Flowchart
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