Trademark Opposition

Trademark Opposition

A trademark can be registered under the Trademarks Act, 1999 in India. The owner must apply to the Registrar of Trademarks (the "Registrar") to register a trademark. There are two situations in which a clause prohibiting registration of your mark may be brought up during the trademark registration procedure. An objection is what is known as the first instance, and an opposition is what is known as the second.

Opposition to trademarks

In India, trademarks can be registered under the Trademarks Act 1999. Owners of trademarks must apply to the Registrar of Trademarks to accomplish this. Following application review, the Registrar will make the trademark public in the official journal. 

Once a trademark is published in the Trademark Journal, anybody may contest its registration. Such oppositions or challenges ought to be sent to the Trademark Registry, where the first application was filed. In the event of opposition, a hearing will be held by the trademark registrar to address the matter.

The Trademarks Act of 1999 and the Trade Marks Rules of 2017 provide the steps and regulations for trademark opposition.

Who can file a Trademark Opposition?

Section 21 of the Trademarks Act, 1999 stipulates that "any person" may submit a notice of opposition. This covers individuals, businesses, trusts, and partnership firms. In truth, individuals might be united as opponents of a trademark if they share objections to it.

Usually, one of the following individuals files a trademark opposition:

1. The proprietor of a prior application or registration for a trademark.
2. Protecting a comparable mark used on similar goods.
3. A party who, although not pursuing trademark registration, used the same or a comparable trademark before the applicant.

Within four months of the trademark's publication date, the third party must submit a trademark objection.

Assertions Against Trademarks

A person may oppose the registration of a trademark on the following grounds:

1. The trademark is the same as or comparable to a registered trademark that already exists.
2. The trademark is primarily descriptive.
3. There is nothing unique about the trademark.
4. The trademark is accepted in the current language and in the established business procedures.
5. There is dishonesty in the application for trademark registration.
6. The mark is either illegal or prohibited by law.
7. It's conceivable that the trademark may mislead or confuse the public. 
8. The trademark includes content that could offend any group or class of people's religious sentiments.
9. As per the Emblem and Names Act of 1950, the trademark is forbidden.

Notification of Opposition:

Anyone wishing to register a notice of objection must provide pertinent details, the opposition request's details, the opposing party's details, and the reasons for the opposition. The notice must be submitted no later than four months from the date of the mark's advertisement.

The Registry will then send a copy of the notification to the concerned applicant if satisfied. After receiving the notice, the applicant will have two months to file a counterstatement; if not, the Registry will consider the trademark application abandoned.

Rebuttal for Notification of Trademark Opposition

After receiving a copy of the notice of opposition with his or her facts, the applicant has two months to file a counterstatement to the notice of objection to the Registrar using Form TM-O. The opposing party will get a copy of the counterstatement from the Registrar.

The Registrar will consider the trademark registration application abandoned and will not proceed with trademark registration if the applicant fails to file the counter statement within two months after receiving the notice of opposition.

Hearing the Opposition and Determining Its Results

Following the exchange of evidence, the Registrar notifies both parties and sets up a hearing. If the other party is not present, their opposition is rejected, which results in the trademark being registered. On the other hand, the applicant's application is deemed abandoned and is rejected if they fail to appear. Every written argument submitted by either party will be considered.

The Registrar decides whether to register the trademark or reject the application after careful consideration. The parties are then notified in writing of this decision at the addresses they have provided.

Final Phase

If the opposing party does not show up for the hearing, the objection will be dropped, and the trademark will be registered by the Registrar.

If the applicant is not present on the scheduled hearing date, the registration application will be deemed abandoned and dismissed. Both parties to the proceeding have submitted written arguments, which the Registrar will consider.

The Registrar will determine whether to proceed with trademark registration or reject the application after hearing from both parties and reviewing the evidence they have supplied. Both parties will receive written notice of the Registrar's decision at the address they have provided.

The Significance of Adhering to Filing Requirements

Throughout the opposition process, both the applicant and the opposing party must abide by the filing requirements, as doing otherwise may have detrimental effects:

1. Abandonment of Opposition: If the opposing party does not timely provide a counterreply or supporting documentation, the opposition may be dropped, allowing the trademark application to proceed.
2. Removal of Trademark Application: The trademark application may be withdrawn, preventing registration, if the applicant does not reply or present the required evidence.

The trademark will be registered, and a trademark registration certificate will be issued by the Registrar upon the applicant's favorable decision. If the Registrar rules in the opposing party's favor, the trademark registration application will be denied. 

Lawgical Adda provides thorough support throughout India's trademark opposition procedure.  Our knowledgeable staff members, who are well-versed in trademark regulations, offer professional direction and advice at every stage of the opposition procedure to guarantee a solid and successful opposition.