Trademark Opposition

Overview

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.

A trademark opposition is a objection claim that a third party has infringed on your trademark. when the owner of a trademark notice that someone else is using it to sell similar products. In that case, you can file an opposition against them. Trademark opposition has two main reasons:

• Incomplete/wrong information
• similar or deceptively similar trademark.

Any interested third party i.e. an individual or a company or any person can initiate the process of trademark opposition, within a period of 4 months from the date for the advertisement of an application made in the Trademark Journal. The opposition of trademark registration can be initiated on various grounds.

Following is the list of all the applicants who can file a Trademark Opposition:

• An individual, Directors of a company or a partner of a partnership firm.
• Trademark owner.
• Two or more persons having similar issues.
• Individual claiming trademark opposition.

Documents

Documents Required for Trademark Opposition

• Submit all the applicant's details, such as full name, full address, nationality, qualification, etc., of the applicant.
• Submit a POA, and it permits the attorney to file the Opposition on your behalf;
• Submit an Affidavit with the basic info about the Trademark and its user data and evidence of use;
• Detailed information about the mark against which the Trademark Opposition is to be filed in the name and basic grounds for filing the Opposition.

Procedure

Procedure for filling a Opposition of trademark

• Any individual aggrieved of proposed Trademark Registration can file an opposition notice online within four months from the advertisement.
• within two months of the receipt of opposition notice, the applicant can file a counter statement.
• The trademark applicant is also required to provide evidence in support of the application to the Registrar within 2 months from the receipt of evidence/intimation filed by the opponent.
• The opponent will further be provided an opportunity to provide any further evidence within one month from receipt of evidence from the applicant. In case the document is in a language other than Hindi or English the same shall be translated in Hindi or English and submitted before the Registrar and a copy thereof to be provided to the opposite party.
• After the submission of evidence from both the parties, the Registrar shall give notice to the parties of the first date of hearing. The date of hearing shall be for a date at least one month after the date of the first notice
• The Registrar will give an equal opportunity of being heard to both the parties. The either party may make a request for adjournment of the hearing with a reasonable cause in form TM-M along with the prescribed fee, at least 3 days before the date of hearing.
• Any party can apply for adjournment of hearing by making an application in Form TM -M by payment of prescribed Fee.
• The Registrar shall consider written arguments if submitted by a party to the proceeding. After hearing of both the parties, the decision of the Registrar shall be communicated to the parties in writing. If the applicant or opponent is not present at the adjourned date of hearing and at the time mentioned in the notice, the application or opposition may be treated as abandoned and the Registrar will proceed with the matter accordingly.

Characteristics

Procedure for filling a Opposition of trademark

• Any individual aggrieved of proposed Trademark Registration can file an opposition notice online within four months from the advertisement.
• within two months of the receipt of opposition notice, the applicant can file a counter statement.
• The trademark applicant is also required to provide evidence in support of the application to the Registrar within 2 months from the receipt of evidence/intimation filed by the opponent.
• The opponent will further be provided an opportunity to provide any further evidence within one month from receipt of evidence from the applicant. In case the document is in a language other than Hindi or English the same shall be translated in Hindi or English and submitted before the Registrar and a copy thereof to be provided to the opposite party.
• After the submission of evidence from both the parties, the Registrar shall give notice to the parties of the first date of hearing. The date of hearing shall be for a date at least one month after the date of the first notice
• The Registrar will give an equal opportunity of being heard to both the parties. The either party may make a request for adjournment of the hearing with a reasonable cause in form TM-M along with the prescribed fee, at least 3 days before the date of hearing.
• Any party can apply for adjournment of hearing by making an application in Form TM -M by payment of prescribed Fee.
• The Registrar shall consider written arguments if submitted by a party to the proceeding. After hearing of both the parties, the decision of the Registrar shall be communicated to the parties in writing. If the applicant or opponent is not present at the adjourned date of hearing and at the time mentioned in the notice, the application or opposition may be treated as abandoned and the Registrar will proceed with the matter accordingly.