Trademark Opposition

Trademark opposition notice in India is sent after a trademark has been accepted for registration on the basis of its distinctiveness and is published in the trademark journal. A person can file Trademark Opposition notice within four months after the trademark is advertised in the Trademark Journal. A trademark opposition notice can be filed by filing form TM – O and paying government fee for the same.

Trademark opposition notice in India is sent after a trademark has been accepted for registration on the basis of its distinctiveness and is published in the trademark journal. As per section 21 of the Trademark Act, any person, irrespective of his commercial or personal interest in trademark can oppose the trademark.

What is the procedure for trademark opposition in India?

Any person can oppose a trademark by giving notice under Form TM – O within four months of publication of a trademark in trademark journal. The trademark opposition notice should contain trademark application, details of opposing party and grounds of opposition. The registrar should serve the notice of opposition to the person who filed trademark registration application, within three months of receiving opposition notice. The trademark opposition process may be broadly divided into four parts:

• Sending Opposition Notice

As mentioned above, any person can file a trademark opposition within four months from the date of its publication in trademark journal. The trademark opposition needs to be filed in prescribed manner with applicable fees.

• Counter Statement filing

After receiving the trademark opposition notice, the trademark registrar serves the notice of opposition to the trademark applicant within three months of such opposition. The trademark applicant is required to file a counter statement (reply) within two months from the date of receipt of the trademark opposition notice from the trademark registrar, failing which the trademark will be marked as “abandoned.”

• Hearing

After filing of counter statement, the registrar will send notice of hearing to both the parties mentioning the date of hearing, which shall me minimum one month after the date of such hearing notice. The hearing notice is based on the opposition notice, counter statement and other supporting documents filed as evidence. Both the parties are required to attend the hearing on the given date. In case of non attendance by any party, the registrar may award the decision against the non-attending party. Based on the hearing and the supporting documents submitted in evidence, the registrar decides whether the opposition was successful and determines whether the trademark should or should not be registered.

• Appeal

On receiving the decision from the registrar of trademarks, if a party is aggrieved by the decision of registrar, it may challenge the same by filing an appeal against the decision with the Intellectual Properties Appellate Board.

A trademark opposition is not only concerning the proprietorship of the opposed trademark but there can also be other grounds of opposition like prohibited mark, absolute grounds or relative grounds. Few reasons of trademark opposition are mentioned below:

• Trademark is descriptive in nature
• Trademark is likely to deceive the public at large and create confusion
• Trademark is same or similar to an existing registered trademark
• Trademark contains matters that is likely to hurt feelings of a class or section of people’s religious feelings
• Trademark is prohibited
• Trademark is devoid of distinctive characters
• Trademark is contrary to the law or prevented by law

Form TM – 5 Filing

The person opposing the trademark should file form TM – 5 while opposing a trademark with the concerned trademark office. The opposition should have details of the trademark application which is being opposed and the details about the opposing party.

• Details about opposing party

If a person outside India is filing trademark opposition, the Name and Address of the party along with the service address of India should be mentioned.

In case the trademark opposition is filed by the licensee of the trademark, the name and address of the licensee along with a proof that he has been authorized to oppose should be filed.

When an opposition is filed by the trademark owner or an earlier trademark, the name and address of the trademark owner with indication of ownership of the trademark has to be filed.