In the trademark registration process, there are two instances where a provision of refusal can be raised against the registration of your mark. The first instance is known as an objection the second instance is known as an opposition.

The examiner raises an objection against the registration of a trademark. Usually, the examiner raises objections based on Sections 9 or Section 11 of the Trademarks Act.

What is a Trademark Opposition?

After the trademark examination of your trademark and the finding that it qualifies for registration, your trademark will be published in the Trademarks Journal. The purpose behind publishing a Trademark in the Journal is to enable any third party to view the trademark and file a trademark opposition against it. Simply put, a trademark opposition is filed by a third party against the registration of your trademark.

When an opponent files an opposition, the trademark status of your application will reflect as ‘Opposed.’

What is the time limit for filing an Opposition?

The third-party has to file the trademark opposition within four months from the date of publication of the trademark.

Who can file a Trademark Opposition?

Statutorily, Section 21 of the Trademarks Act, 1999, states that ‘any person’ can file a notice of opposition. This includes individuals, companies, partnership firms, and trusts. In fact, if two or more persons have the same issues against a trademark, they can be joined together as opponents.

Ordinarily, the following persons file a trademark opposition:

The owner of an earlier trademark application or registration covering a similar Trademark for similar goods.
A person who has used the same or a similar trademark before the applicant but has not sought trademark registration.

What are the grounds for filing a Trademark Opposition in India?

The various grounds on the basis on which a person may initiate Opposition Proceedings are:

1.  The trademark is similar or identical to an earlier or existing registered trademark.
2. The mark is devoid of any distinctive feature or includes indications that may be used in trade to denote the standard, quantity, intended purpose, value, geographical origin, or time of manufacture
3. The mark is descriptive in nature.
4. Application for the trademark is made with bad faith.
5. The mark is customary in the current language or in established business practices.
6. The mark is likely to confuse the public or cause confusion. This includes any trademark that may be identified with a trademark that is already registered or which has become customary in the practice of a trade.
7. The mark is contrary to the law or is prevented by law.
8. The trademark is prohibited under the Emblem and Names Act, of 1950
9. The mark covers such matters that are likely to affect any class or segment of people’s religious feelings.

Where to file the Notice of Opposition in India?

The notice of opposition should be filed at the trademark registry, where the application for the conflicting mark has been filed. For instance, if the application is filed at the Mumbai office of the Trade Mark Registry, then the opposition proceedings must initiate in Mumbai only.

What is the procedure involved in Trademark Opposition in India?

The following stages are involved in the Trademark Opposition procedure and timeline:

Notice of Opposition:

Any person seeking to file a notice of opposition is expected to state the important specifics, details of the opposition request, details of the opposing party, and grounds for opposition. Such notice must be filed within four months of the date on which the mark was advertised.

If the Registry is satisfied with the notice, it shall then serve a copy to the applicant concerned. The applicant shall have a period of two months from the date of receipt of the notice to file a counterstatement or, otherwise, the Registry shall deem the status of the trademark application to be abandoned.

Counter-Statement:

Within two months of the receipt of the notice of opposition, the Applicant should file a counterstatement. If the Counter-Statement is not filed within two months, the Applicant is deemed to have abandoned the Trademark application.

Evidence in Support of Opposition:

Suppose the Applicant files the Counter-Statement, within two months (extendable by one month) of the receipt of the counter-statement. In that case, the Opponent must file evidence by way of an Affidavit. The Opponent also has the option to write to the Registrar stating that he does not desire to file evidence but instead intends to rely on the facts stated in the Notice of Opposition.

Evidence in Support of Application:

Upon receipt of the Opponent’s evidence, even the Applicant is provided with two months for filing Evidence in Support of Application, if any. Upon request, the Registrar can extend the filing period by one month.

Evidence in reply:

Additionally, the Opponent is given one month (extendable by one month) to file Evidence in response to the Applicant’s evidence.

Hearing:

Based on the notice of opposition, counter-statement, and evidence filed, the Registrar shall call for a hearing and such a hearing notice indicating the date on which the parties will be heard. The Registrar shall send such notice at least one month before the first hearing date.

Anyone who wishes to appear shall notify the Registrar within 14 days of receipt of such notice by sending the appropriate form. Any individual who does not do so should be regarded as not wanting to be heard, and the matter may continue accordingly. After hearing the arguments of both parties, the Registrar has to decide upon the trademark merits.

Registration or rejection:

If the registrar decides to favor the applicant, the trademark will be registered, and a registration certificate will be issued. The trademark application shall be rejected if the registrar decides to favor the opponent.

Thus the trademark opposition is an effective remedy available to the registered proprietor/ prior user of a trademark. All that the registered proprietor/ prior user is required to do is to be vigilant on trademark watch and initiate an appropriate proceeding at the right time.