Trademark Opposition

After the registrar has accepted the trademark application on the basis of distinctiveness and published the third party opposition's trademark in the journal, trademark opposition in India occurs at a later stage.

Eligibility

No matter whether they have a personal or professional stake in the issue, "any person" is allowed to oppose a trademark under Section 21 of the Trademark Act.

A trademark can be contested by a client, member of the public, rival business, or any other individual. Additionally, the party opposing the registration must have previously had a registered trademark.

Both parties must decide whether the trademark should be abandoned or registered after a trademark opposition is filed.

Anyone who thinks that the public may become confused by the published mark may submit an opposition, and the trademark registrant is responsible for protecting the mark.

Grounds For Trademark Opposition

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 or identical to an earlier or existing registered trademark.
• The trademark is devoid of distinctive character.
• The trademark is descriptive.
• The trademark registration application is made with bad faith.
• The trademark is customary in the current language and or in the established practices of a business.
• The trademark is likely to deceive the public or cause confusion.
• The trademark is contrary to the law or prevented by law.
• The trademark is prohibited under the Emblem and Names Act, 1950.
• The trademark contains matters that are likely to hurt any class or section of people's religious feelings.

Procedure for Trademark Opposition

Opposition Notice

Any person may submit a notice of opposition to a trademark that appears in the trademark journal within four months of the first date of appearance.

It must be submitted on Trademark Form 5 using the required format and fees.

Counter-Statement

Following the filing of the trademark opposition notice with the registrar, the trademark registrar would serve a copy of the notice to the trademark applicant. After receiving the opposition notifications, the trademark applicant has two months to submit a counter statement.

If the trademark applicant doesn't submit the counter statement by the deadline, the trademark application will be "abandoned". Understanding the status of trademark registration is crucial, though.

Hearing

After the evidence filing stage, the registrar shall send notices to both parties stating the date of hearing, which shall be at least one month after the date of the first notice. The hearing is based on the opposition notice, counter-statement filing, and evidence submitted. The registrar hears the case, and if any of the parties fails to appear for the hearing, the registrar will rule against them.

Appeals

Following a review of the information presented and a hearing in which all parties participated, the registrar determines whether or not the opposition was successful and whether or not the trademark should be registered. A party may, though, challenge the registrar's choice to the Intellectual Property Appellate Board if they are not happy with it.

Time Limit for Trademark Opposition

Any person may object to the trademark registration for three months (which may be extended by a period not to exceed one month) following the trademark advertisement in the Trade Marks Journal. The Trademark Registrar's office is the sole place where trademark opposition filings may be made; they cannot be submitted directly to a court or the Appellate Board (IPAB).

The trademark registration will be denied if a trademark objection is successful. If the trademark opposition application is denied, the brand will be registered.

Filing Trademark Opposition

1. Details of the trademark application against which the opposition is entered
   The application number against which opposition is entered along with an indication of the goods or services listed in the trade mark application against which opposition is entered and the name of the applicant for the trade mark.
2. Details of earlier mark or the earlier right on which the opposition is based
   If the opposition is on account of an existing trademark application or registered trademark, then application number or registration number of the earlier mark. If the opposition is based on an mark which is alleged to be a well known trade mark, then an indication to that effect in which country or territory the earlier mark is recognized to be well known.
3. Details of the opposing party
   If the opposition is entered by the proprietor of an earlier mark or of the earlier right, his name and address and an indication that he is the proprietor of such mark or right. If the opposition is entered by the successor in title to the registered proprietor of a trade mark who has not yet been registered as new proprietor, the name and address of the opposing party and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office. If the opposing party has no place of business in India, the name of the opponents and his address for service in India.
4. Grounds on which the opposition is based

Form TM-5

The opponent must submit Form TM-5 in order to oppose a trademark application. The trademark opposition must be submitted to the relevant trademark office in accordance with the application. The following information must be on the TM-5 form:

Details about the trademark application

• Impugned application number
• Indication of the goods or services from the trademark application
• The name of the applicant for the trademark sought to be opposed.

Details about the opposing party

1. If the opposition is filed by the trademark owner of an earlier mark
   Name and address of the trademark owner and an indication that he is the trademark owner of such trademark.
2. If a trademark licensee files the opposition
   Name and address of the trademark licensee along with an indication that he or she has been authorized to enter the opposition.
3. If a successor files the opposition to the registered trademark owner
   Name and address of the successor and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office or where this information is not available, was sent to the appropriate office.
4. If a party outside India files the opposition
   Name and address the opposing party and address India's service

The trademark opponent or an authorized person who is acquainted with the case's facts should sign the notice of the opposition.