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 on the Opponent within two months from the date of receipt of the same.
- Within two months of receiving the counter statement, the Opponent shall file its affidavit by way of evidence in support of the opposition.
- The Registrar shall ordinarily serve a copy of the affidavit by way of evidence in support of the opposition on the Applicant within two months from the date of receipt of the same.
- Within two months of receiving the affidavit by way of evidence in support of the opposition, the Applicant shall file its affidavit by way of evidence in support of the application.
- The Registrar shall ordinarily serve a copy of the affidavit by way of evidence in support of the application on the Opponent within two months from the date of receipt of the same.
- Within two months of receiving the affidavit by way of evidence in support of the application, the Applicant shall file its affidavit by way of evidence in reply.
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 decision of the Registrar made in the opposition proceedings can be challenged by an aggrieved person by filing an appeal before the Intellectual Property Appellate Board(IPBA).
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