Overview
Trademark opposition in India occurs after the Registrar approves a trademark application based on distinctiveness and publishes the application in the Trademark Journal for third-party opposition. If a third party finds the trademark objectionable, typically under sections 9, 11, or other provisions of the Trademarks Act, they can file an opposition with the Trademark Office, requesting its refusal. The status of the trademark application will be marked as “opposed,” indicating that the registration is contingent on the outcome of the opposition. Section 21 of the Trademark Act 1999 outlines the opposition process. Generally, a trademark is opposed due to its similarity to an existing mark or alleged lack of distinctiveness. The opposition process is often lengthy, and the status of the trademark may remain “opposed” for several months, or even over a year, until a final decision is made by the Registrar of the Trademark Office in a hearing.
TRADEMARK: Before delving into trademark opposition, it’s important to understand what a trademark is. A trademark can be any symbol, including a name, picture, word, label, or even a sound. Once registered, a trademark becomes a valuable asset for a business, as it helps establish a unique identity and positioning in the market.
Registering a trademark is the first step in protecting your brand name. A registered trademark is a critical business asset, and it’s essential to monitor any attempts by other businesses or individuals to register similar trademarks, even in unrelated domains.
When a trademark objection is raised, the application status will be marked as “Opposed.” For a registered trademark, the status will show as “Objected” in the Indian Trademark Registry. The applicant or trademark holder will be notified of the objection, along with the grounds for the opposition.
Who Can Oppose Trademark Application in India?
- Any individual can oppose a trademark application filed by an applicant for various reasons during the application process.
- According to Section 21 of the Trademark Act, “any person” can oppose a trademark, regardless of their commercial or personal interest in the matter.
- A trademark opposition can be filed by a customer, a member of the public, a competitor, or any other person. However, the individual filing the opposition must be a prior registered trademark owner.
Response to Trademark Opposition:
Trademark objection reply needs to be filed within two months of receiving the said notice. You need to follow the below-mentioned steps while filing a trademark objection reply-
Analyzing the Objection:
It is essential to carefully study and analyze the trademark objection. Any confusion or ambiguity in understanding the objection could lead to incorrect filing of the reply, potentially affecting the outcome of the case. Thoroughly reviewing the objection will ensure that the response is accurate and addresses the specific concerns raised by the Registrar.
Drafting Of Trademark Objection Reply
The trademark objection reply letter should include the following:
A proper response to the objection raised should include a well-supported answer, referencing the relevant rules of law, precedents, and judgments. This will help substantiate your position and strengthen your case against the objection, demonstrating the legal basis for your trademark’s eligibility and defending it against the claims made by the opposing party.
The differences between the applicant’s trademark and the conflicting mark should be clearly highlighted. This can include variations in design, spelling, pronunciation, overall appearance, or the goods/services associated with the marks. Emphasizing these differences can help demonstrate that there is no likelihood of confusion between the two marks, strengthening the applicant’s case for registration.
Other evidence and supporting documents should be provided to validate the reply or response. This can include proof of the trademark’s distinctiveness, prior use, market presence, advertising, or any other relevant documents that support the applicant’s claim. These documents help strengthen the response, making it more convincing and addressing the concerns raised in the objection.
An affidavit should be submitted stating the usage of the trademark on the applicant’s website, social media channels, media advertisements, publicity materials, and the availability of trademarked products on e-commerce platforms. This affidavit should be accompanied by related documentary proof, such as screenshots, advertisements, links, or sales data, to validate the trademark’s active use in commerce.
The draft of the trademark objection reply letter is then filed online on the Trademark e-filing portal.
Process of Trademark Opposition:
OPPOSITION NOTICE:
Any person can file a notice of opposition against a trademark that appears in the trademark journal within four months from the first date of publication. The notice must be filed using Trademark Form 5 in the prescribed manner and accompanied by the applicable fees.
COUNTER-STATEMENT:
After the trademark opposition notice is filed with the trademark registrar, the registrar will serve a copy of the opposition notice to the trademark applicant. The trademark applicant must file a counter-statement within two months of receiving the opposition notice. If the applicant fails to file the counter-statement within the specified period, the trademark application will be considered “abandoned.” It is important to understand the status of trademark registration at this stage.
HEARING:
Once the evidence filing stage is completed, the registrar will notify both parties of the hearing date, which will be at least one month after the first notice. The hearing is based on the notice of opposition, the counter-statement, and the filed evidence. The registrar will conduct the hearing, and if any party fails to appear, the registrar will rule against that party. After the evidence filing stage, both parties will receive notices with the hearing date.
APPEALS:
After reviewing the evidence and hearing both parties, the registrar will decide whether the opposition was successful and whether the trademark should be registered. However, the party dissatisfied with the registrar’s decision may challenge it by filing an appeal before the Intellectual Property Appellate Board.
Time Limit for Trademark Opposition:
After the trademark is advertised in the Trademark Journal, any person can file an opposition to the trademark registration within three months (which can be extended for a period not exceeding one month). Trademark opposition filings must be submitted to the Trademark Registrar’s office and cannot be directly taken to a court or the Appellate Board (IPAB).
If the trademark opposition is successful, the trademark registration will be refused. Conversely, if the trademark opposition is rejected, the trademark will be registered.
Reasons for the Opposition of Trademark:
A trademark opposition can be raised under different sections like the absolute grounds, relative grounds, prohibited mark, or even concerning the opposed trademark’s proprietorship.
The Indian trademark law does not provide any specific grounds of opposition. There are various reasons a trademark opposition may be opposed mentioned below:
- The trademark is similar to or identical with an earlier or existing registered trademark.
- The trademark lacks distinctiveness.
- The trademark is descriptive in nature.
- The trademark registration application is filed in bad faith.
- The trademark is commonly used in the current language or in established business practices.
- The trademark is likely to deceive the public or cause confusion.
- The trademark is contrary to the law or prohibited by law.
- The trademark is prohibited under the Emblems and Names Act, 1950.
- The trademark contains elements that could potentially hurt the religious feelings of any class or section of people.
What Are the Pre-requisites for Trademark Opposition?
The assignor loses their rights, title, or any interest in the trademark as soon as the assignment deed is executed in favor of the assignee, even if the assignee’s name has not been updated in the Registrar of Trademarks’ records.
In the case of Classic Equipments Pvt. Ltd. vs. Johnson Enterprises, 2009 (41) PTC 385 (Del), it was observed that:
[The case law and judgment could be inserted here, depending on the specific legal point or finding being referenced in this case.]
The prerequisites for opposition depend on the different grounds of the opposition. The required documents and details for each ground are as follows:
- If the opposition is based on an already or previously registered trademark, the opponent must clearly mention the details, application number, and the priority date related to the registered trademark.
- If the opposition is filed by a licensee, the name and address of the licensee must be provided. Additionally, an indication confirming that the licensee is authorized to file the opposition must be included.
- If the opposing party is a foreign entity with no place of business in India, the opponent’s name and an address for service in India are required.
- If the opposition is based on a well-known trademark or a trademark with a good reputation in the market, the opponent must submit evidence proving the existence of such a well-known trademark. The opponent should also indicate the countries where the trademark is recognized as well-known. Additionally, the opponent may present proof of trademark registration or an application for trademark registration.
What Are the Contents of Notice for Trademark Opposition?
As per Rule 43 of Trademark Rules, 2017, the notice of Opposition of Trademark should contain the following:
- An indication of all the goods or services listed in the trademark application against which the opposition is filed.
- The name of the trademark applicant against whom the opposition is filed.
- A statement declaring that the trademark being opposed is a well-known trademark as defined under Section 11(2) of the Trademark Act, 1999. The countries where the trademark is recognized as well-known should also be stated in the statement.
- The name of the opposing party.
- The application number of the opposing party.
- The trademark of the opposing party.
What Are the Benefits of Trademark Opposition?
The benefits of Trademark Opposition are as follows:
In the creation of a brand, the popularity and demand of the public play a vital role. It is essential to consult the general public for the approval and registration of an applied trademark.
The owners of registered trademarks have the opportunity to prevent any similar or identical trademarks that could potentially harm or dilute the reputation of their existing trademark.
The trademark owner can also prevent confusion among the public caused by similar trademarks in the market, ensuring clarity and distinctiveness for their brand.
CONCLUSION:
The maintenance and creation of a brand is a significant responsibility, requiring substantial funds. Therefore, the application for brand creation should undergo a thorough process of checks and scrutiny before being registered. Registration helps establish the validity and distinctiveness of a brand in the market. Trademark opposition is a critical and essential step in the registration process. It serves as one of the most effective remedies to secure and protect your trademark. It is important to file the opposition within the prescribed period, as missing this timeframe results in the loss of the right to file for opposition. The time limitation plays a vital role in ensuring that remedies are awarded to the aggrieved party. The process of filing trademark opposition is often time-consuming and prolonged. We at [company name] ensure that all these processes are handled efficiently and professionally.
Under Indian law, ‘any person’ can file the notice of opposition. This includes individuals, companies, partnership firms and trusts. Two or more persons can be joined as opponents in the same notice of opposition provided the issues are the same.
Trademark opposition in India occurs after the registrar has approved the trademark application based on distinctiveness and has published it in the Trademark Journal for third-party opposition. One of the key statuses in relation to a trademark is “opposed,” which means that the registration of the trademark is contingent on the outcome of the opposition. When a trademark is marked as “opposed,” it indicates that a third party has raised objections, typically based on Section 9, Section 11, or other provisions of the Trademarks Act, and has formally requested its refusal. Section 21 of the Trademark Act, 1999 provides detailed guidelines on the opposition process. In general, trademarks are opposed due to similarities with existing marks or claims of non-distinctiveness, or both. The opposition process is often lengthy, and the status of a trademark marked as “opposed” can remain unresolved for many months, sometimes even over a year, until the matter is finally decided at a hearing before the Registrar of the Trademark Office.
After the trademark is advertised in the Trademark Journal, any individual can file an opposition to the trademark registration within three months (this period may be extended by up to one month). Trademark opposition filings must be submitted to the Trademark Registrar’s office and cannot be directly taken to a Court or the Intellectual Property Appellate Board (IPAB).
If the opposition is successful, the trademark registration will be refused. However, if the opposition application is rejected, the trademark will proceed with registration.
After a trademark opposition is filed, both parties need to conclude whether the trademark should be abandoned or registered. However, there is no restriction on filing an opposition. Anyone who believes that the published mark might create confusion among the public can file for the opposition while defending the trademark lies in the trademark registrant’s hands.
OPPOSITION NOTICE: Any individual may file a notice of opposition against a trademark that appears in the Trademark Journal within four months from the date of its first appearance. The notice must be filed using Trademark Form 5 in the prescribed manner and accompanied by the applicable fees.
COUNTER-STATEMENT: Once the trademark opposition notice is filed with the registrar, a copy will be served to the trademark applicant. The applicant must file a counter-statement within two months of receiving the opposition notice. If the applicant fails to file the counter-statement within the specified time, the trademark application will be considered “abandoned.” It is essential to understand the status of the trademark registration during this process.
HEARING: After the evidence filing stage is complete, the registrar will notify both parties of the hearing date, which will be at least one month after the notice is sent. The hearing will be based on the opposition notice, the counter-statement, and the evidence submitted. If any party fails to attend the hearing, the registrar will rule against them. Notices for the hearing will be sent after the evidence filing stage.
APPEALS: After reviewing the evidence and hearing both parties, the registrar will decide whether the opposition was successful and determine whether the trademark should be registered. If any party is dissatisfied with the registrar’s decision, they can appeal to the Intellectual Property Appellate Board (IPAB).
The pre-requisites depend on different grounds of the Oppositions. The required documents and details based on different grounds are as follows:
- Opposition Based on an Already Registered Trademark:
If the opposition is based on an existing or previously registered trademark, the opponent must provide details, including the application number and the priority date related to the already registered trademark.
- Opposition Filed by a Licensee:
If the opposition is filed by a licensee, the opponent must include the name and address of the licensee, along with an indication that the licensee is authorized to file the opposition on behalf of the trademark owner.
- Opposition by a Foreign Party:
If the opposing party is a foreigner and does not have a place of business in India, the opponent must provide their name and the address for service in India.
- Opposition Based on a Well-Known Trademark:
If the opposition is based on a well-known trademark or a trademark with a strong market reputation, the opponent must submit evidence supporting the well-known status of the trademark. The opponent should also provide information on the countries where the earlier trademark is recognized as well-known. Additionally, the opponent can present proof of the registration or the application for the registration of the trademark.
The notice of opposition should be filed at the trade mark registry where the application for the conflicting mark has been filed. For instance, if the application is filed at the Delhi office of the Trade Mark Registry, then the opposition proceedings would be initiated in Delhi only.
As per Rule 43 of Trademark Rules, 2017, the notice of Opposition of Trademark should contain the following:
The application number of the Trademark against which Opposition is filed
An indication of all the goods or services listed in the application of Trademark against which the notice for Opposition is filed;
The name of the applicant for Trademark against whom Opposition is filed;
A statement declaring that the Trademark against which Opposition is filed is a well-known Trademark within the Section 11(2) of the Trademark Act, 1999. The countries where the Trademark is already a well-known Trademark should also be stated in the statement;
The name of the Opposing Party;
The application number of the Opposing Party;
The Trademark of the Opposing Party.
Generally, a Power of Attorney should be submitted at the time of filing the notice of opposition. If the Power of Attorney is not available at the time of filing the opposition, it can be filed at a later date.
Yes, it is possible to file the opposition on the basis of the pending application or use. The Trade Marks Act, 1999 recognizes common law rights.
Once the Notice of Opposition is filed, the Registrar records it and serves a copy to the Applicant, along with an official intimation to the Opponent. The Applicant is then required to file a Counter Statement within two months from the receipt of the Notice of Opposition. If the Applicant fails to file the Counter Statement within the stipulated time, the application is considered abandoned.
The Opponent must submit evidence by way of an affidavit in support of the opposition within two months of receiving the Counter Statement. This period can be extended by one month. The Opponent is required to provide the Applicant with a copy of any evidence filed at the Registry and inform the Registrar that this has been done.
Similarly, the Applicant must file evidence in support of the application within two months of receiving the Opponent’s affidavit/evidence. This period can also be extended by one month.
Afterward, the Opponent has one month (extendable by one month) to file evidence in reply to the evidence filed by the Applicant.
If the evidence is not filed within the prescribed time, it can be filed later as ‘further evidence’. However, this needs to be accompanied with an interlocutory petition explaining the reasons for delay in filing of the said evidence and asking for Registrar’s permission to condone the delay.
Once both parties have filed their evidence, the matter is scheduled for a hearing at the Trade Marks Registry. The parties are given an opportunity to make oral submissions during the hearing. The Registrar will send a prior notice to both parties informing them of the hearing date.
Within 14 days of receiving the first notice, the parties must notify the Registrar about their intention to attend the hearing. If a party fails to attend, the Registrar will proceed with the matter based on the available written evidence.
The benefits of Trademark Opposition are as follows:
In brand creation, public popularity and demand play a crucial role. For a trademark to be approved, it’s essential to consider public perception and the registration of any applied trademark.
Registered trademark owners have the right to prevent the registration of similar or identical trademarks that could potentially harm or dilute the reputation of their established brand. This helps ensure their trademark remains distinctive and protected in the market.
Additionally, owners can prevent confusion among the public when similar trademarks exist, safeguarding the integrity and recognition of their brand. This protection is key to maintaining the unique identity of the business and its products or services.
Considering the tremendous backlog at the Trade Mark’s Registry, it would be difficult to estimate the exact time period for conclusion of the opposition proceeding. Roughly, it takes 3-4 years for a contested opposition to be decided.
You can find out more by reading our ‘Guide to the protection of innovation and goodwill’, or by contacting our Trade Marks Team or Litigation Team.
In most cases yes, although you need to be careful in relation to the Notice of opposition as the Commissioner is constrained by the Act in terms of what extensions can be granted and when. Also, to obtain an extension you need to show that you have acted diligently to meet the previous deadline and that the justice of the case warrants an extension (i.e. you will suffer prejudice if it isn’t granted).
Yes, it is possible to file the opposition on the basis of the pending application or use. The Trade Marks Act, 1999 recognizes common law rights.
The status of a trademark is marked as “Opposed” when a third party has filed an opposition against its registration. Upon receiving the opposition, the Registry sends a notice to the applicant or their agent. To contest the opposition, the applicant must file a counter statement within two months from the date of receipt of the notice. If the counter statement is not filed within this period, the trademark application will be considered abandoned, and it cannot be revived. No extension of time is allowed for filing the counter statement.
