What is Trademark Opposition?
When an application for registration of a trademark is filed with the registrar, the examination officer shall then advertise the application for any objections if any party feels that the trademark which is up for registration violates their trademark they can file an application to the registrar.
This application filed with the examination officer is known as trademark opposition.
After the examiner reviews your trademark and finds that it qualifies for registration, your trademark will be published in the Trademarks Journal. The Trademark published in the Journals offers any third party to view the trademark filed and give them opportunities to file an opposition against it if the published trademark infringes his trademark as per Trademark Act.
When any third party files an opposition against your Trademark, your trademark status will reflect as 'Opposed'.
The time limit for filing an Opposition
The third-party has the right file the trademark opposition within 3 months (that can further be extended by 1 month) from the date of publication of the trademark.
Who can file an Opposition?
Under Section 21 of the Trademark Act, any person, irrespective of their interest in the case can file an opposition before the registrar. This section provides the person with the right to oppose the registration of a trademark. The opponent’s registration status in the trademark registry is immaterial.
Grounds of Filling an Opposition
• For the mark is generic in nature.
• The mark is descriptive in nature.
• The mark is devoid of distinctive character.
• If the mark is a threat to the public, against public morality or hurtful of religious sentiments.
• The mark is contrary to the law or is prevented by law.
• If the mark falsely represents any geographical area.
• The trademark is similar or identical to an earlier or existing registered trademark.
• The applicant has a bad intention to deceive the public and is made with bad faith.
• The trademark is prohibited under the Emblem and Names Act, 1950
• The mark is customary in the current language or in the established practices of business.
What must be included in your Reply/Opposition?
An application for the opposition that is filed by the person with the registrar shall always include:
• A brief/specific reasons to raise opposition or answers to opposition.
• Relevant case laws to support your opposition/reply.
• A User Affidavit shall be provided by the person filing the application to prove the extensive usage of the mark by him/her.
• Evidence to prove that the applied trademark is a well-known trademark used by one other competitor.
• Other evidence supporting the inherent usage of the mark and establish distinctiveness.
Procedure for filing a Trademark Opposition
• Notice of Opposition
Any person can file a notice of opposition on a trademark that is advertised in the trademark journal within 3 months (extendable up to 1 month) from the date of advertisement.
• Counter-Statement:
Within 2 months of the receipt of the notice of opposition, the Applicant has to file a counter statement. The Applicant is deemed to have abandoned the Trademark application If the Counter-Statement is not filed within 2 months from the objection (extendable by one month).
• Evidence in Support of Opposition:
The third-party (opponent) also has an option to write to the Registrar with a statement of not desire to file evidence but instead to rely on the facts stated in the opposition notice If the Applicant files the Counter-Statement, within 2 months (extendable by one month) of the receipt of the counter-statement the Opponent must file evidence, by way of an Affidavit.
Evidence in Support of Application:
Upon receipt of the evidence of the Opponent, even the Applicant is provided with 2 months (extendable by 1 month) for filing Evidence in Support of Application/reply, if any.
• Evidence in reply:
The Opponent has to give his reply within one month ( (extendable by 1 month) to file Evidence in response to the Applicant's evidence.
• Hearing:
The Registrar of a trademark shall call for a hearing within 14 days of receipt of notice of hearing based on the notice of opposition, counter-statement, and evidence filed. The intention of appearance to the registrar shall be submitted by the parties. The matter is then taken up to be heard by the Registrar and to decide upon merits.
• Registration or rejection:
If the registrar decides in favor of the opponent, then the trademark application shall be rejected. If the registrar decides in favor of the applicant, the trademark will be registered and a registration certificate will be issued.
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