Trademark Opposition
In India, trademark opposition takes place following the acceptance of a trademark application by the registrar, which is based on its distinctiveness, and subsequent publication of the trademark. Please reach out to our experts for assistance!
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Overview on Trademark Opposition
A trademark opposition refers to a formal objection submitted by a third party against the registration of a trademark that has been accepted and subsequently published in the Trademark Journal. Consequently, trademark opposition serves as an essential strategy for businesses to address and prevent trademark infringement. It is important to note that there is a limited timeframe within which one can submit a trademark opposition application. This article aims to provide comprehensive insights into the process of trademark opposition in India.
Under the Trademarks Act of 1999, any individual or entity is permitted to file a trademark opposition application using the designated format. Therefore, even in the absence of a personal trademark registration in India, one can still initiate a trademark opposition to contest the validity of other trademarks.
Who is Qualified to Submit a Trademark Opposition
Section 21 of the Trademark Act stipulates that any person has the right to oppose a trademark, irrespective of their commercial or personal stake in the matter.
A trademark may be contested by consumers, members of the public, competitors, or any other interested party. Furthermore, the individual initiating the opposition must be a holder of a previously registered trademark.
Once a trademark opposition is filed, both parties are required to determine whether the trademark should be relinquished or granted registration.
Any individual who perceives that the published mark could lead to public confusion is entitled to file an objection, while the responsibility of defending the trademark lies with the registrant.
Reasons to Oppose a Trademark
In India, where is the appropriate location to submit a Trademark Opposition Notice?
The Trademark Opposition Notice is required to be filed with the trademark registry where the application for the conflicting mark was submitted.
To illustrate this with an example: If the application is lodged at the Trademark Registry’s Delhi office, the opposition proceedings must be initiated solely in Delhi.
What actions should you take if your status indicates “Opposed”? In this situation, you are required to prepare a rebuttal statement within four months (three months plus one month extendable) from the date of advertisement. It is advisable to have your counter statements prepared and submitted by a trademark professional.
It is important to note that if no counter-statement is submitted to the registry within the designated timeframe, the trademark application will be considered abandoned.
Procedure for Trademark Opposition
Opposition Notice Any individual may submit a notice of opposition to a trademark listed in the trademark journal within four months from its initial publication date.
This notice must be filed using Trademark Form 5, adhering to the specified format and payment requirements.
Counter-Statement Once the trademark opposition notice is filed with the registrar, a copy will be provided to the trademark applicant. The applicant is required to submit a counter-statement within two months of receiving the opposition notice..
Failure to file the counter-statement within the designated period will result in the abandonment of the trademark application. Thus, it is essential to comprehend the nuances of trademark registration.
Hearing After the evidence submission phase, the registrar is obligated to notify both parties of the hearing date, which must occur at least one month after the initial notification. The hearing will be based on the opposition notice, the counter-statement, and the evidence presented. The registrar will preside over the hearing, and if either party fails to attend, the registrar will issue a ruling against them.
Appeals Following a review of the submitted materials and the hearing involving both parties, the registrar will decide whether the opposition was valid and if the trademark should be registered. A dissatisfied party has the right to appeal the registrar’s decision to the Intellectual Property Appellate Board.
Trademark Opposition Time Limit
Following a period of three months from the publication of the trademark in the Trade Marks Journal, any individual has the right to contest the registration of the trademark, with the possibility of extending this period by an additional month. Filings for trademark opposition must be submitted to the Trademark Registrar’s office and cannot be directly escalated to a Court or the Intellectual Property Appellate Board (IPAB).
In the event that a trademark opposition is upheld, the trademark registration will be rejected. Conversely, if the opposition application is dismissed, the trademark will proceed to registration.
Submitting an Objection to a Trademark
Details Concerning the Trademark Application Under Opposition The application number subject to the opposition must be specified, along with a description of the goods or services encompassed in the trademark application. Additionally, the name of the trademark applicant should be provided.
Information Regarding the Prior Mark or Right Supporting the Objection In cases where the objection is founded on an existing trademark application or registration, the application or registration number of the prior mark must be included. If the objection pertains to a claimed well-known trademark, it is necessary to indicate the country or region where the previous mark is recognized as well-known.
Details of the Opposing Party When the opposition is initiated by the owner of an earlier mark or right, it is essential to include their name and address, along with a statement confirming their ownership of the mark or right. If the opposition is filed by a successor in title to a registered proprietor of a trademark who has not yet been registered as the new proprietor, the name and address of the opposing party must be provided, along with the date on which the application for registration by the new proprietor was received by the relevant office. In instances where the opposing party does not maintain a place of business in India, the name and address for service in India must be included.
TM-5 Form To initiate a trademark opposition, the opponent is required to submit a TM-5 form. This form must be filed with the appropriate trademark office in accordance with the application. The TM-5 form should contain the following information:
Details About the Trademark Application The application number in question. A description of the goods or services associated with the trademark application. The name of the applicant for the trademark being contested.
Information Regarding the Opposing Party If the opposition is filed by the owner of an earlier mark, the name and address of the trademark owner must be included, along with evidence confirming their ownership of the trademark.
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