What is Trademark Opposition?
Once a trademark is filed for registration, it will be presented before the examiner. The Examiner will examine the trademark and raise objections under Sec. 9 (1) or Sec. 11 of the Trade Marks Act, 1999, if any. This process is called ‘Objection’. Then, if the examiner is satisfied that the trademark is applicable, the trademark will be published in the trademark journal. After, publication of trademark in journal, the trademark is open for opposition by any third party. The trademark so accepted and advertised in journal will be available for opposition for the period of 4 months. After the completion of the opposition period, if no opposition is filed by any third parties, the trademark application will proceed for registration. If any third-party files any opposition, then the opposition proceedings will commence. The status of such trademarks in the E-registry will be reflected as ‘opposed’.
Who can oppose Trademark in India?Under Sec. 21 of the Act, ‘any person’ may file an opposition against a trademark which is published in the journal. The opposition need not be filed by any registered proprietor of a trademark. The opposition may be filed by any company, partnership firms, trusts, or by any general public who may be purchaser or customer or any person who likely to use the goods/services.
Time limit to file Trademark opposition:The opposition shall be filed within four months from the date of publication of the trademark in the journal. The time limit of four months cannot be extended for whatsoever reason.
During the opposition proceedings, the parties should strictly adhere to the time limits under the Trademarks Act as well as the Limitation Act. If the parties failed to proceed within the prescribed time in the opposition proceedings, the proceedings deemed to be abandoned by the Registry of the Trademarks.
Step by Step Process- Trademark OppositionStep 1: Filing the Notice of Opposition
Within the period of four months from the date of publication of trademark in the journal, any person can file a notice of opposition (TM-O) against an advertised trademark with the prescribed fee. The notice of opposition should contain the details about the trademark to be opposed and the grounds for opposition of the said trademark.
Step 2: Filing the Counter-Statement
The TM-O will be reviewed by the Registry of Trademark and shall be sent to the other party. Upon receiving the notice, the other party should file a counter statement (TM-O) with the prescribed fee within two months from the date of receiving the notice.
Step 3: Filing of Evidence in support of the Opposition
The opposition party may provide Evidence in support of his opposition to support his case in the form of an Affidavit within two months from the date of receiving the counter-statement under Rule 45. The opposition party may choose to waive filing such evidence and solely rely on the facts.
Step 4: Filing of Evidence in support of the Application
Upon receiving the opposition evidence or the intimation of waiver by the applicant, the other party shall file the evidence in support of the Application within two months under Rule 46. The other party may waive to file evidence and rely on the counter statement alone.
Step 5: Filing of Evidence in Reply
The opposition party may file additional evidence in support of his opposition within one month of receiving the evidence in support of the application or intimation of the waiver under Rule 47. The purpose of this option or rebuttal to attain finality in the proceedings
Step 6: Hearing
After receiving the notice of opposition, counter statements, evidence, and reply evidence, the Registrar shall fix a date for the hearing. The parties have to notify their intention to appear before the registrar within 14 days from the date of receiving the notice of hearing.
The parties can request an adjournment under Form TM-M at least 3 days before the hearing date. The number of adjournments is restricted to 2 and the duration of each adjournment is restricted to not more than 30 days.
If the parties are absent at the date of hearing or adjourned hearing date, the Registrar may dismiss the application if the defaulting party is the applicant and may dismiss the opposition if the opposition party is absent.
Step 7: Registration or Rejection
The trademark application will proceed for registration if the Registrar believes that the evidence and facts are in favour of the applicant. Otherwise, the opposition will be allowed and the application of registration will be rejected.