Opposition to trademark registration refers to an objection raised by a third party against a trademark that has been accepted and advertised in a trademark journal. Within four months from the date of publication in the trademark journal, any interested party can raise opposition.
Trademark Objection
In trademark law, opposition means objections raised by a third party to a trademark application. Trademark registration can be opposed to protecting the rights of the existing registered holder from the registration of a similar or deceptively similar trademark.
Within four months from the date of the advertisement of the trademark application published in the Trademark Journal, any third party interested in opposing the trademark can initiate the trademark objection process. There are several reasons for opposing trademark registration.
In accordance with Section 21 of the Trademarks Act, 1999, anyone can contest trademarks within the prescribed period of time. If an opposition is not filed within the prescribed time, it cannot be filed later and the Registrar will proceed to register the trademark. Trademarks Act, 1999 states that anyone may file an opposition within the prescribed time period.
Trademark Opposition Process – Requirements
Publication of Trademark Application
An opponent must wait for the Registrar to accept the proposed trademark application and publish it in the Trademark Journal before filing the Notice of Opposition.
Issue of Notice of Opposition (Form TM-O)
Within 4 months after publication of an advertisement in the Trademark Journal, a Notice of Opposition (Form TM-O) must be submitted.
Trademark Opposition Process in India
Stage-1 : Notice of Opposition (Rule 42)
A Notice of Opposition must be filed within four months following the publication of the trademark advertisement in the trademark journal. A fee of $20.00 has to accompany the Notice of Opposition. In the notice, the opposing party must be named, the grounds for opposition to trademark registration should be stated, along with the application against which the opposition is being raised. As soon as the Registrar receives the notice, he or she will notify the trademark applicant of the notice.
Stage-2: Reply Notice of Opposition or Counter Statement (Rule 44)
The applicant for a trademark must submit a counterstatement in form TM-O within two months of receiving a copy of the opposition notice and must state what facts, if any, he or she admits to the opposition. Once the counterstatement is received from the applicant, the Registrar shall provide a copy to the opponent within two months. Failure by the applicant to file a counterstatement within the prescribed time period will result in the application of trademark registration being abandoned.
Stage-3: Evidence in support of Opposition by Opponent (Rule 45)
In response to the counterstatement, the opponent must file an affidavit proving the opposition within two months. Unless the opponent informs the Registrar and the applicant in writing, the opposition notice shall be deemed abandoned if he or she decides not to present evidence to support their opposition.
Stage-4: Evidence in support of Application by Applicant (Rule 46)
Applicants are also required to submit evidence in support of their trademark applications within 2 months following receipt of the opponent’s evidence/intimation. An applicant who intends to rely on the facts stated in the counterstatement rather than providing evidence shall notify the Registrar and the opponent in writing, or the application shall be deemed abandoned.
Stage-5: Evidence in Reply by Opponent (Rule 47)
Furthermore, the opponent will be able to submit any further evidence within one month of receiving evidence from the applicant. When the document is in a language other than Hindi or English, it has to be translated into Hindi or English and submitted to the Registrar. A copy of the translated document should be provided to the opposing party as well.
Stage-6: Hearing of Opposition
Both parties will be notified of the first date of hearing after the Registrar receives evidence from both sides. An at least one-month period must pass after receiving the first notice before the date of the hearing. Equal opportunities will be given to both parties by the Registrar. A request for adjournment of the hearing may be submitted by either party in form TM-M, along with the prescribed fee, no later than three business days before the scheduled hearing date. It is permissible for the parties to request only two adjournments, with each adjournment not exceeding 30 days in duration.
Adjournment of Hearing
Applicants for adjournment of hearing can do so by submitting Form TM-M and paying Rs.900.00. Once the registrar finds that the request is satisfactory, he will postpone the hearing to the next available time.
Order by the Registrar of Trademark on Notice of Opposition
Any written argument submitted by a party to the proceeding will be considered by the Registrar. It is the Registrar’s duty to communicate his decision in writing to the parties after hearing both parties. The Registrar will proceed with the matter according to the Registrar’s instructions if the applicant or opponent is not present at the adjourned hearing date and time.
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