After a Trademark application has been filed for registration, an examiner in the trademark the office reviews the trademark. If the examiner deems the trademark fit for registration, the said mark is advertised in the Trademark Journal for a compulsory period of four months. During this period, any person can file a notice of opposition against the mark. If there is no opposition filed within the four months period, the trademark proceeds for registration. The intention behind the publication of the trademark in the journal is to enable any third party to view the trademark and file an opposition against it, if required.
In case of a trademark facing an opposition, the applicant can file a counter statement to the opposition within two months of the date of receipt of Notice of Opposition. A Trademark may be opposed mainly on the absolute ground(s) for refusal under Section 9 or on relative grounds of refusal under Section 11. A person filing an opposition need not be a registered proprietor of any mark. Any person may oppose a trademark, who can be a purchaser, customer or a member of the public likely to use the goods or avail the services. 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. The motivation behind this is that the Opponent is not only representing himself but the public at large because having two similar marks in the market can only result in confusion.
1. Notice of opposition
After a trademark application has been approved by an examiner, it is published in the trademark journal for four months. During this time, any person can file a notice of opposition on the trademark application that is advertised in the trademark journal. The opponent sends the notice to the TM registry first for review, and if all the formalities are met, the Registry serves the notice on the other party i.e. the Applicant.
2. Counter statement
A counter-statement or reply to the opposition notice must be filed by the Applicant within two months of the receipt of the notice of opposition. There is no extension on filing a counter Statement, hence if it is not filed within two months, the Applicant is deemed to have abandoned the Trademark application. Like the notice, a counter- statement is also first sent to the Registry for review and if all the formalities are met, the Registry will then serve the counter-statement on the Opponent.
3. Evidence in support of opposition
After the Applicant has filed the Counter-Statement against the notice of opposition, the opponent must file evidence supporting its opposition, by way of an Affidavit, within 2 months (extendable by one month) of the receipt of the counter-statement. The Opponent also has an option to write to the Registrar stating that he does not desire to file evidence but instead intends to rely on the facts previously stated in the Notice of Opposition issued. However, if the evidence or the intimation of waiver is not informed within two months, then the opposition will be deemed abandoned.
4. Evidence in support of application
The Applicant may provide for filing of evidence, if any, in support of its application within two months (extendable by one month) of receipt of the evidence of the Opponent. Alternatively, the Applicant may also choose to waive his right to submit any evidence.
5. Evidence in reply
Furthermore, the Opponent has the option of filing additional evidence in support of the opposition and in response to the Applicant’s evidence, within one month (extendable by one month) of receipt of the Evidence by Applicant. This option is given to achieve some sort of finality in the proceedings, to rebut the evidence produced by the Applicant.
The Registrar, based on the notice of opposition, counter-statement, and evidences filed, shall call for a hearing. Both the parties are required to notify their intention to appear in the hearing to the Registrar, within fourteen days of the receipt of the notice of hearing. A request for adjournment can be made by either party, under Form TM-M, at least 3 days prior to the hearing date. Further, the maximum number of adjournments that can be requested by a party is restricted to 2 and the duration of each of such adjournment is restricted to not more than 30 days. Finally, the matter is heard by the Registrar and decided upon merits.
7. Registration or rejection
If the registrar decides in favour of the applicant, the trademark will be registered, and registration certificate will be issued. If the registrar decides in favour of the opponent, then the trademark application shall be rejected. However, the party aggrieved by the Registrar’s decision may challenge the same by filing an appeal before the Intellectual Property Appellate Board.
- Power of Attorney
- Evidence supporting Trademark Registration / Opposition.
1. Who can file the Notice of Opposition?
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:
- The proprietor of an earlier trademark application or registration of the trademark with similar goods.
- A person using a similar mark or same mark prior to the cited mark, but the registration of such mark has not been obtained.
2. What is the time period for filing 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.
3. Do I need to submit a Power of Attorney at the time of filing the Notice of Opposition?
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.
4. My Mark is not registered in India; can I file an Opposition based on my pending Application and use?
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 the same. The Trademarks Act, 1999 recognizes common law rights as well.
5. Out of the five Trademark registry(s) in India, where can I file the Opposition?
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.
6. What is the next stage once I file the Notice of Opposition?
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.
7. What are the timelines to be followed for adducing Evidence by the Parties?
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.
8. If I am not able to file the Evidence within the time frame, are there provisions to file Evidence at a later stage?
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 by an interlocutory petition explaining the reasons for the delay in filing of the said evidence and asking for the Registrar’s permission to condone the delay.
9. Once Evidence is submitted by both Parties, what is the next stage of proceeding?
Once the evidence is filed by both parties, the matter is listed for hearing at the Trademarks 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.
10. What is the time period for an Opposition to be decided?
Considering the tremendous backlog at the Trademarks Registry, it would be difficult to estimate the exact time period for the conclusion of the opposition proceeding. Roughly, it takes 3-4 years for a contested opposition to be decided.