Concept of Trademark Opposition in India

In India, whenever an application for trademark is applied, it is advertised by the Registrar of Trademark Department in Trademark Journal. In case any third party has any objection with the trademark which is advertised in the trademark journal, then it can file an opposition within four months from the date of advertisement. Hence, in case any objection is filed against a trademark, the status of the online trademark registration will display as “opposed”.

The motive behind advertising the trademark in Trademark Journal is only to inform about the same to the public at large and in case any third party has objection, then it can raise trademark opposition against it.

Meaning of Trademark Opposition

Whenever you apply for trademark registration, the examiner at Trademark Registry will examine your application completely and if he finds that your application is up to the mark, it will publish it in the Trademark Journal. It will let every one know about the trademark/brand/logo, and any third party can file an opposition against it if any.

In simple words, trademark opposition means raising an objection against a particular trademark by any third party and if any opposition is filed, then the status of your trademark will show as “Opposed”.

Who can file an application for Trademark Opposition?

Following can file a Trademark Opposition application:

• Any person including an individual, corporate, partnership firm and trusts
• Two persons who have the same issue against a trademark can file a joint opposition
• Owner of an earlier trademark application
• A prior user of the same trademark

Filing of Trademark Opposition Notice

Any person who wants to oppose about the advertised trademark can file a Trademark Opposition notice at the respective Trademark Registry where the application for its registration has been filed.

Hence, in case the registration application was filed at the Delhi office of the Trademark Registry, then the aggrieved party must initiate the opposition proceedings at Delhi only.

What should be the applicant immediate step in case the status of Trademark appears as “Opposed”?

The very first step of the applicant is to prepare a Counter Statement within the time duration of four months from the date of advertisement in Trademark Journal.

Contact team of experts at Legal Window to draft your counter statement and handle the entire Trademark Opposition process.

The trademark application will get abandoned in case you do not file the counter statement within the stipulated time period.

Grounds of Opposition of Trademark

The most possible reasons for a Trademark Opposition are as follows:

• Any resemblance between logo or word or the trademark with an already existing product for which trademark has been applied.
• When a similar trademark is already published in the Journal
• When the mark is non-distinctive and is having a descriptive nature
• In case the applied trademark affects the religious sentiments of people
• If the trademark is likely to cause confusion with another trademark and is also contrary or prevented by law applicable in India
• Application for trademark is made with bad faith or intentions
• The trademark is prohibited under the Emblems and Names Act, 1950

Different Stages and procedure for Trademark Opposition

The following stages and procedure goes through in Trademark Opposition:

Step1: Any aggrieved person or opponent who has a concern with the trademark registration can file a notice regarding the same within 4 months from the date of advertisement in the Trademark Journal at the Trademark Office

Step 2: After receiving the notice of opposition, the applicant can file a counter statement within 2 months of the receipt of the notice of opposition. However, it can be extendable by one month if an affidavit is provided

Step 3: The applicant can also attach any available supporting evidences along with the counter statement. On the other hand, the opponent can also provide various evidences supporting his arguments. But, the opponent has the option to provide in writing to the Registrar stating that he/she does not desire to provide any evidences and his facts are the sole relying points to be considered.

Step 4: The opponent is allowed 1 month, which can be extendable by another month to file any evidence in response to the Applicants evidence.

Step 5: The Registrar will issue a notice regarding the date of hearing and on receipt of the notice, the parties has to notify about their availability within 14 days of receiving the notice.

Step 6: During the hearing, both the parties will be given sufficient opportunity of being heard and then the Registrar will decide the matter upon its merits.

Step 7: In case the matter is decided in favor of the applicant, then the trademark will be registered and a registration certificate will be issued. On the other hand, in case the Registrar decides in favor of the opponent, then the trademark application of the applicant will be rejected.

Conclusion

Trademark Opposition is just an opposition raised by the third party which prohibits the registration of your proposed trademark. The third party needs to send a notice to the applicant and the applicant needs to present its counter statement. Post this, both the parties will be called for hearing and then after listening to both, the examiner will decide whether the trademark can be registered or needs to be rejected.

Got a Notice of Opposition of your Trademark? Contact Legal Window who will help you with its process.