The Trademarks Act, 1999, provides for the registration of a trademark in India. The owner of the trademark has to apply to the Registrar of Trademarks (‘Registrar’) for obtaining the trademark registration. Upon receiving the application for registration, the Registrar will advertise the trademark in the trademark journal.
Any person can file an opposition for registration of the trademark published in the Trademark Journal. The opposition is to be filed to the Registry of Trademarks, where the trademark registration application is filed. When the trademark registry receives any kind of opposition to the trademark, it will conduct a hearing to decide the matter.
The Trademark Act, 1999 and the Trade Marks Rules, 2017 provides the process of trademark opposition.
Initiation of Trademark Opposition
Section 21 of the Trademarks Act, 1999, provides that any person can file a notice of opposition to the Registrar. This includes companies, individuals, trusts and partnership firms. Thus, any aggrieved third party can raise opposition to trademark registration.
Grounds for Trademark Opposition
The grounds on which a person can file opposition for trademark registration are:
- The trademark is identical or similar to an already existing registered trademark.
- The trademark is descriptive in nature.
- The trademark is devoid of distinctive character.
- The trademark is customary in the present language or the established practices of business.
- The application for trademark registration is made with bad faith.
- The mark is prevented by law or contrary to the law.
- The trademark is likely to cause confusion or deceive the public.
- The trademark contains matters likely to hurt the religious feelings of any section or class of people.
- The trademark is prohibited as per the Emblem and Names Act, 1950.
Trademark Opposition Process
The process of trademark opposition are as follows:
Notice of Trademark Opposition
Any person can file for trademark opposition to the Registrar within 4 months from the date of advertisement of the registration application in the trademark journal by giving a notice in Form TM-O and payment of fees.
The notice should contain the application (trademark registration application) details, opposing party details and grounds of opposition. The Registrar should serve the copy of the notice of opposition to the applicant (person who filed the trademark registration application).
Counterstatement for Notice of Trademark Opposition
The applicant must file his/her counterstatement to the notice of opposition to the Registrar in Form TM-O within 2 months of receiving the copy of the notice of opposition stating his/her facts. The Registrar will serve the copy of the counterstatement to the opposing party.
Suppose the applicant does not file the counter statement within 2 months of receiving the notice of opposition, the Registrar will consider that the trademark registration application is abandoned and thus will not proceed to register the trademark.
Evidence For and Against Trademark Opposition
The opposing party shall provide evidence supporting his/her notice of opposition to the Registrar in less than 2 months of getting the copy of the counterstatement filed by the applicant. The opposing party should also send all copies of the evidence to the applicant.
Upon receiving the evidence copy by the opposing party, the applicant should file his/her evidence in support of the trademark registration application within 2 months of receiving the opposing party’s evidence copy. The applicant must send his/her evidence to both the Registrar and the opposing party.
The opposing party can file further evidence within 1 month of receiving the evidence copies of the applicant. The opposing party must submit further evidence to both the Registrar and the applicant.
Hearing and Decision Concerning Trademark Opposition
The Registrar, after the receipt of evidence by both parties and further evidence of the opposing party, will give notice to both parties of the first date of hearing. If the opposing party is not present on the hearing date, the opposition will be dismissed, and the Registrar will register the trademark.
If the applicant is not present on the hearing date, the registration application will be treated as abandoned and dismissed. The Registrar will consider the written arguments submitted by both parties to the proceeding.
After hearing both parties and considering the evidence submitted by them, the Registrar will decide whether to proceed with the trademark registration or reject the trademark registration application. The decision of the Registrar will be communicated to both parties in writing at the address provided by them.
Conclusion of the Trademark Opposition Process
When the Registrar decides in favour of the applicant, the trademark will be registered and will issue the trademark registration certificate. When the Registrar decides in favour of the opposing party, then the trademark registration application will be rejected.
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