During Trade Mark Registration Process, anyone can oppose the trademark within the period of four months from the date of Publication of the Application in the Trade Mark Journal. If the Trade Mark Applicant faces Opposition, he/she has an opportunity to file a counter statement within two months from the date of receipt of notice of Opposition. A Trade Mark may be opposed mainly on the absolute ground(s) for refusal under Section 9 or on relative grounds of refusal under Section 11.
After Trade Mark is published in the Trade Mark journal, any person can file a notice of opposition within 4 months from the date of publication.
The Applicant can file the counter- statement within two months of the receipt of Trade Mark notice of opposition. If not filed within the stipulated time, the Trade Mark Application is deemed to be abandoned.
Once the Counter-Statement is served upon the opponents, they have the option of providing evidence to support their claims, within two months. Similarly, after this, the Applicant gets two months to produce any evidence in support of the Counter-Statement. The Applicant may also waive this right to produce evidence. The Opponent then gets another opportunity to produce evidence to either rebut the evidence produced by the Applicant or against their waiver.
After Counter Statements and Evidences are filed, Registrar can call the Applicant and Opponent for a hearing.
If the Registrar is satisfied with the evidences provided by the Applicant, the Trade Mark may be registered and Registration Certificate can accordingly be issued. On the other hand, if the Registrar is not satisfied, the Trade Mark application may be rejected.
Registration or Rejection
Section 21 of the Trademark Act, 1999 provides that ‘any person’ can file the 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.
Usually the following persons file the notice of opposition:
According to Section 21 of the Trademark Act, 1999, any person may file such opposition within 4 months from the date of advertisement or re-advertisement of the application for registration.
Generally the power of attorney needs to be submitted with the application under Section 145 with TM-48. However if the power of attorney is not submitted during the time of opposition, it can be filed at a later stage.
Yes, even if the mark is not registered in India, still an opposition can be filed against any application published in the journal which seems to be similar or same. The Trade Marks Act, 1999 recognizes common law rights as well.
The notice of opposition shall be filed in the registry where the conflicting mark has been filed. The Registry which entertains the conflicting mark application shall have the authority to adjudicate the notice of opposition application.
On filing the notice of opposition, the Registrar shall record and serve a copy of such notice to the applicant. On receipt of such notice of opposition, the applicant within 2 months shall send to the Registrar in the prescribed manner a counter- statement. If the applicant fails to submit the counter- statement within the prescribed time period, the application may be deemed to have been abandoned. If the applicant sends the counter- statement, the Registrar shall serve a copy to the person giving the notice of opposition. After the Opposition stage, the next stage is the evidence stage where evidence in support of Opposition and evidence in support of Application is exchanged with the prescribed form.
The Opponent is required to adduce evidence by way of affidavit in support of the opposition within two months of receipt of the Counter Statement. The period is extendable by one month. The Opponent is required to deliver to the Applicant a copy of any evidence filed at the Registry and tell the Registrar that he has done so. Similarly, the Applicant is required to file any evidence in support of the application within two months of the receipt (by the Applicant) of the copy of the affidavit/evidence filed by the Opponent. This period is also extendable by one month.
Thereafter, the Opponent is required to file evidence in reply within one month of the receipt of the evidence filed by the Applicant. The said period is extendable by one month.
Under Rule 48 of the Trademark Rules, 2017 if the evidence is not filed within the prescribed time it can be filed later as ‘further evidence’, which rests on the discretion of the Registrar. However this needs to be accompanied with an interlocutory petition explaining the reasons for delay in filing of the said evidence and asking for Registrar’s permission to condone the delay.
Once the evidence is filed by both the parties, the matter is listed for hearing at the Trade Marks Registry enabling the parties to submit oral submissions. The Registrar must give prior notice to the parties informing them of the hearing. The date of hearing shall be for a date at least 1 month from receipt of the first notice, the parties must notify the Registrar indicating their intention to attend the hearing.
The Registrar after examining the evidence and hearing both the parties passes a written order. If any party is aggrieved by the order, he/she can file an appeal at the Intellectual Property Appellate Board (IPAB) within three months of its receipt.
Considering the tremendous backlog at the Trade Marks Registry, it would be difficult to estimate the exact time period for conclusion of the opposition proceeding. Roughly, it takes 3-4 years for a contested opposition to be decided.