Opposition to trademark registration is filed against a particular trademark that is advertised in the journal by the trademark registry. An opponent comes with opposition when a trademark seeking to get registered is against the norms set by the Trademark Act, of 1999. Most often a trademark is opposed when it bears a similarity to the opponent’s registered trademark.
The process of registering a trademark in India is governed by the Trademark Act, 1999. The registration deals with getting the logos, symbols, brand names, or phrases related to the business getting accredited under the Act, such that only the registered proprietor has the exclusive right to use and market the products or services under the said trade name. The process of trademark registration is a long and circumvented procedure.
The applicant submits the trademark application along with the required mandatory documents to acquire exclusive rights over a given brand name. If the registrar finds the name to be in accordance with the norms set by the Act, advertises the name in the trademark journal. If there are no oppositions raised by any third party for the respective name, then the Registrar grants the trademark registration to the applicant.
On the contrary, if any opposition is raised, the party raising the opposition and the applicant of the respective trademark will be given an opportunity to be heard. The trademark applicant will be given a chance to respond to the opposition and based on the merits of the case, the Registrar will decide whether the applicant can be granted the registration for the respective trademark.
Initiation of Trademark Opposition Procedure
The Trademark Act, 1999 states that any person is eligible to file an opposition for a trademark that seeks registration. This is inclusive of individuals, companies, trusts, and partnership companies.
A trademark opposition can be raised on the following grounds:
- The trademark lacks uniqueness and bears resemblance to an existing registered trademark
- The trademark that seeks registration is descriptive in nature
- The trademark lacks distinctiveness
- The trademark is conventional in the regional language or in the respective genre of business
- The trademark application is made with ill intention or bad faith
- The trademark seeking registration is against the law or contrary to the law
- The trademark is likely to confuse or mislead the public
- The subject matter of the trademark is likely to hurt the religious feelings of a specific class or section of people
- The trademark is impermissible as per the Emblem and Names Act, 1950.
Procedure Pertaining to Trademark Opposition
1. Notice to Raise Opposition for a Trademark:
Any person, which includes both individuals and companies, can raise opposition to a trademark within four months from the date of advertising the trademark in the trademark journal. The opposition should be filed in the form TM-O along with the stipulated fee. The notice should specify the details of the respective trademark such as the registration details, along with the grounds of opposition, and details of the individual or organisation that is opposing the trademark. The applicant should duly be furnished with a copy of the opposition thus raised, within three months of receiving such notice.
2. Filing of Counterstatement:
Once the applicant receives the notice of opposition, the next logical action on the part of the applicant to perform is to file the counter statement for the opposition raised. The counter statement should be filed using Form TM-O within a time frame of two months of receiving such notice. The counter statement should be stating the facts and should be answering as to why the respective trademark is valid against the opposition raised. If the applicant fails to file the counter statement within the stipulated time, the Registrar will consider the application abandoned and will not proceed further with the registration of the trademark.
3. Evidence Involved in Opposition and Counterstatement:
The party raising the opposition shall furnish the required evidence to the Registrar within two months of receiving the applicant’s counterstatement. The opposing party should also send copies of such evidence to the applicant. The applicant should thereafter file adequate evidence for the trademark registration within two months of receiving such copies from the opposition. The evidence must be sent both to the Registrar and the opposing party.
The opposition can file further evidence if needed within one month of receiving the notice from the applicant. Once again, the opposing party has to dispatch any such evidence to both the Registrar and the applicant.
4. Registrar’s Decision with Respect to the Trademark Opposition:
The Registrar after a thorough analysis of the notices and pieces of evidence filed by the parties, calls both the applicant and the opposing party for a hearing by sending them a notice. If the opposition fails to make an appearance on the first date of the hearing, the Registrar will dismiss the opposition and will proceed with the registration of the trademark favoring the applicant. Alternatively, if the applicant is absent, the trademark application will be deemed abandoned and will be dismissed.
The Registrar will however take into consideration the written arguments submitted by the parties to the proceeding. Based on the merits of the case and arguments advanced along with the evidence furnished by the parties, the Registrar will either proceed with or reject the trademark registration. The Registrar is obligated to convey the decision thus arrived at, to both the applicant and opposition by way of a written notice.
Thus, the registration of a trademark is dependent on various discrete factors. If an opposition is raised, the Registrar and the parties involved have to duly follow the procedures laid out in the Trademark Act, 1999 as elucidated above. The filing of opposition and the responses along with the evidence should strictly be within the time limits, failing on which the registration or the opposition as the case may be will get dismissed.
Following up on such time-bound activities can be excruciating to a business owner. It is therefore prudent to assign the same to trained trademark professionals. Our trademark experts at Vakilsearch, are well-experienced in handling matters pertaining to trademark applications and oppositions and are more than ready to help you. Having an exceptional eye to detail, we can sure hand hold you at every step of your trademark registration
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