Trademark Opposition

Any person can oppose a trademark application filed by an applicant within the 4-month period after the advertisement of the mark in the Trade Marks Journal. Any person can oppose the mark by filing a Notice of Opposition on the prescribed Form TM-O along with the prescribed fee. The person filing the opposition need not have any personal or commercial interest in the matter or be a prior registered trademark owner.

Conditions for filing Trademark Opposition in India:

There are several grounds on for raising Trademark Opposition. Some of them are as follows:

1. The proposed trademark resembles with the existing trademark that someone else has already registered.
2. The logo or brand name violates the Emblem and Names Act, 1950 that means the proposed trademark is prohibited under the said law.
3. The nature of the trademark is descriptive.
4. The proposed trademark contradicts with the law or any law prevents it.
5. The trademark consists of name, logo, symbol, image etc. which hurt the sentiments of a particular religion, community, society or any specific class of people.
6. The proposed name represents bad faith.
7. The trademark is conventional in the instituted practices of a business or the present language.
8. If the trademark seems to cause confusion or mislead the public.

Trademark Opposition Proceeding in India:

Stage 1: Filing a Notice of Opposition & Filing a Counter-Statement

Within four months post publication of the mark the Trademarks Journal, any person can oppose a trademark by filing a Notice of Opposition by way of Form TM-O along with the prescribed fee.

Upon receipt of such Notice of Opposition, a counter-statement must be filed within the two month statutory deadline on Form TM-O along with the prescribe fee by the applicant. There is no extension to file a counter-statement, which means that if the other party fails to file a counter-statement within 2 months of receiving the Notice, he shall be deemed to have abandoned his application.

Stage 2: Filing of Evidence

Evidence in support of the Opposition:

Within two months of receiving the counter-statement, the opponent may provide evidence in support of his opposition in the form of an Affidavit to strengthen the case. If the opponent wants to rely solely on the facts stated in the Notice of Opposition, he/she can choose to waive filing such an Affidavit.

Evidence in support of the Application:

Within two months of receiving the evidence or intimation of waiver by the opponent, the applicant should provide the evidence in support of his/her application. The applicant can also choose to waive submitting any evidence and can rely only on the counter-statement.

Evidence in Reply:

Within one month of receiving the evidence or intimation of waiver by the applicant, the opponent again has the option to provide more evidence in support of his opposition, if any.

Stage 3: Hearing

Upon completion of evidence submission, the Trademarks Registry appoints a hearing date and hearing officer, which both the parties are notified. A request for adjournment can be made under Form TM-M, at least 3 days prior to the hearing date. Further, the maximum numbers of adjournments that can be requested by a party are restricted to 2 and the duration of each of such adjournment are restricted to not more than 30 days.

The Registrar shall upon hearing both the parties and reviewing the evidence submitted determine on whether the trademark shall be registered or not thereby bringing the opposition proceeding to a conclusion. However, the party aggrieved by the Registrar’s decision may challenge the same by filing an appeal before the Intellectual Property Appellate Board.

MYDBIZ is the market leader in Trademark services in India. Before we get started with the engagement, all the required information and documents are collected. An engagement manager would be assigned who will be the point of contact till the engagement is completed. The average time required to complete the Trademark Opposition Drafting & Filing is 3-4 working days depending on the government processing time and client document submission.

For more information, feel free to contact us at info@mydbiz.com or call us at +91 9632 993 993.