In India, trademark opposition occurs after the registrar has granted approval for the trademark application based on distinctiveness and has published the third-party opposition's trademark in the journal.
What is Trademark Opposition?
The Trademarks Act of 1999 in India allows people to register their trademarks. To do this, the trademark owner needs to apply to the Registrar of Trademarks. Once they apply, the Registrar puts the trademark in a journal.
Now, if someone does not like this trademark being registered, they can oppose it. They need to send their opposition to the same place where the trademark application was filed. Then, there's a meeting to check out what should happen. The rules for this process are in the Trademark Act of 1999 and the Trade Marks Rules of 2017.
Protection for Trademark Owners: Trademark opposition is a powerful way for trademark owners to prevent other marks from harming their brand or causing confusion in the market.
Public Input: Since a brand gains recognition through the public, it is crucial to seek public opinion to determine if the applied trademark should be allowed or not.
Reasons to Oppose a Trademark:
Similar to Existing Trademark: If the trademark looks too much like one that already exists.
Lacks Uniqueness or Descriptiveness: If the mark does not stand out or describe what it is.
Could Confuse or Deceive: If the mark might trick people or make them unsure.
Common or Cultural Words: If the mark uses words that are everyday language or common in business.
Against the Law: If the mark breaks the law or goes against the Emblem and Names Act of 1950.
Offensive to Religion: If the mark includes things that might upset people's religious beliefs.
Tax & Process
Applicant's Information: Your name, address, and nationality.
For Companies and Others: If you represent a company or another type of organization, you will need to show your registration certificate.
Power of Attorney: This lets your attorney file the trademark opposition for you.
Affidavit: A sworn statement with info about your trademark, when it started being used, and proof of its use.
Details about the Other Mark: Information about the trademark you are opposing, like its name and why you're objecting to it.
Notice of Trademark Opposition: Anyone can oppose a trademark registration within four months of it being advertised in the trademark journal. They do this by sending a notice (Form TM-O) and paying a fee. The notice includes details about the trademark, the opposing party, and the reasons for opposition. The Registrar sends a copy of the notice to the applicant within three months.
Counterstatement for Notice of Trademark Opposition: The applicant must respond to the opposition by filing a counterstatement (Form TM-O) within two months of receiving the notice. This states their side of the story. The Registrar sends a copy of the counterstatement to the opposing party within two months.
Evidence For and Against Trademark Opposition: The opposing party provides evidence supporting their opposition within two months of getting the counterstatement from the applicant. They also send copies of the evidence to the applicant. The applicant then submits their evidence in support of the trademark registration within two months of receiving the opposing party's evidence. Both parties send their evidence to the Registrar and each other. The opposing party can submit further evidence within one month of receiving the applicant's evidence.
Hearing and Decision: The Registrar schedules a hearing after receiving evidence from both sides. If one party doesn't show up, they lose – either the opposition is dismissed, or the registration application is abandoned. The Registrar considers written arguments if needed. After the hearing and reviewing the evidence, the Registrar decides whether to proceed with the trademark registration or reject it. The decision is sent to both parties in writing.
Who can oppose a Trademark?
Anyone can oppose a trademark, but it's often done by someone who owns a trademark for similar goods or services.
Can you oppose a trademark if it's not registered yet?
Yes, you can oppose a trademark even if the application is still pending or the mark is already in use. Common law rights prevent people from selling similar goods and services.
Where to File a Trademark Opposition?
You should file the opposition notice at the trademark registry where the conflicting mark application has been submitted.
What is the period for filing trademark opposition?
The period for filing trademark opposition is initially three months from the date the trademark was published in the trademark journal. If necessary, this period can be extended by one month.
Is it necessary to submit the Power of Attorney while submitting the Trademark opposition?
Generally, it is required to submit a power of attorney when filing the opposition notice. However, if you don't have it at the time of filing, you can submit it later.