Trademark Opposition Filing in India | Trademark Opposition Filing 2020-07-23T20:57:01+05:30

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What is Trademark Opposition Filing?

Trademark is an unique expression of word, symbol, logo or device related to a product or service that distinguishes it from other products or services on the market. Your trademark registration gives an exclusive right and no one else has the right to use the trademark for their products or services, or in their marketing. Trademark opposition filing is important for protection of the IP.

After the application for Trademark, the examiner reviews whether it qualifies for registration and after successful acceptance by examiner, the trademark will be published in the Trademarks Journal. The purpose behind publishing a Trademark in the Journal is to enable any third party to view the trademark and trademark opposition filing is done against it if such person feels that his or her Intellectual Property Rights stand violated due to the registration of such trademark. In simple words, a trademark opposition filing is done by a third- party against the registration of your Trademark. Registration Arena helps in the trademark opposition filing.

Who can do Trademark Opposition Filing?

According to Section 21 of Trademarks Act 1999, ‘any person’ can file the notice of Trademark opposition Filing within a period of 4 months from the date of publication in journal. Which means an Applicant of an earlier filed trademark application or owner of a registered trademark having similar or identical trademark and dealing in similar goods/services or Prior User of a similar trademark, but who has not sought registration of the trademark or any other individuals, companies, LLP’s, Trust, Society or other body corporate can file notice of trademark opposition filing. However, it is important to note that trademark opposition filing should be for a bona fide purpose as the opponent is required to present evidence in Support of Trademark Opposition on a later stage.

It is important to note that the notice of trademark opposition is filed within the given time frame after the publication of the journal. If the opportunity of Trademark opposition filing application is once lost, it is lost forever. After the deadline bypasses and non-receipt of any notice of opposition, the Registry is obligated to grant the registration certificate for trademark.

Need for Trademark Opposition Filing

  • The owner of brand can maintain the exclusivity of his Trademark by identifying and opposing similar or identical trademarks.
  • The opposition mechanism ensures that the intellectual property of the other parties are well protected.
  • The opposition of trademarks allows other people’s opinions to come into action and protect the interest of affected party.
  • The Trademark Opposition helps to eliminate fraudulent and dishonest persons with mala fide intents to copy or counterfeit trademark and cause loss to goodwill of business.

Grounds for filing Trademark Opposition Filing

  • If the mark descriptive in nature or does not contain any distinctive character.
  • The trademark is likely to cause confusion among public or is deceptive.
  • Application for trademark has been made in bad faith.
  • If the mark is likely to hurt the feelings of the people on basis of religion, race etc.
  • If the trademark is prohibited under the Emblem and Names Act of 1950.
  • The trademark is similar or identical to an earlier or existing registered trademark

Minimum Requirements For Trademark Opposition Filing

Opponent with valid reason or grounds for Opposition
Power of Attorney in TM-48
Notice of Opposition in Form TM-O
Filing Opposition within 4 months from the date of publication of Trademark in journal

Procedure For Trademark Opposition Filing

Documents Required For Trademark Opposition Filing

Documents required for Trademark Opposition is as follows :

  1. Opponent’s Details : The details include name, address, nationality, other details of the Opponent. If the Opponent is a Body Corporate, you need to submit the registration documents.
  2. Applicant’s details : The name of applicant against whom notice of opposition is to be filed.
  3. Opposition details : The name of the impugned trademark and the grounds of opposition.
  4. Power of Attorney : Authorisation allowing the agent/attorney to file the notice of opposition on the opposing party’s behalf.
  5. Affidavit : This includes the information about trademark like user date and proof of use

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FAQ

If it is a word it should be easy to speak, spell and remember. The best trademarks are invented words or coined words or unique geometrical designs.
Please avoid selection of a geographical name, common personal name or surname. No one can have monopoly right on it.
Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc.)

Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in prescribed manner for registration. The application should contain the trademark, the goods/services, name and address of applicant and agent (if any) with power of attorney, the period of use of the mark. The application should be in English or Hindi. It should be filed at the appropriate office.

Under modern business condition a trademark performs four functions
-> It identifies the goods / or services and its origin.
-> It guarantees its unchanged quality
-> It advertises the goods/services
-> It creates an image for the goods/ services.
The registration of a trademark confers upon the owner the exclusive right to the use the trademark in relation to the goods or services in respect of which the mark is registered and to indicate so by using the symbol (R), and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar marks due to special circumstances, such exclusive right does not operate against each other.
For filing new applications there are prescribed forms depending on the nature of application such as For
m TM-1, TM-2, TM-3, TM-8, TM-51 etc. Fees: Rs.4000/
To file a Notice of Opposition to oppose an application published in the Trade Marks Journal (FormTM-5).
-> Fees: Rs. 2,500/- for each class covered
-> For Renewal of a Regd. trademark (Form TM-12 ). Fees: Rs.5,000/-
-> Surcharge for belated renewal (Form TM-10).Fees: Rs. 3,000/-
-> Restoration of removed mark (Form TM-13) Fees: 5,000/-
-> Application for rectification of a registered trademark (Form TM-26) Fees: Rs. 3,000/-
-> Legal Certificate (Form TM-46) (Providing details of entries in the Register) Fees: Rs.500/-
-> Copyright search request and issuance of certificate (Form TM-60) Fees: Rs, 5,000/-.

After the examiner reviews and accepts the trademark, the application is advertised in the Trademarks Journal. Once advertised, the trademark is open for opposition purposes for a period of four months. In case no opposition is filed within this stipulated time period, the mark proceeds to registration.

According to Section 21 of Trademarks Act 1999, ‘any person’ can file the notice of opposition for a Trademark within a period of 4 months from the date of publication in journal.

The notice of opposition can be filed within four months from the date the Trade Marks Journal is made available to the public.

Yes, it is possible to file the opposition on the basis of the pending application or use with valid reason or grounds for opposition.

The Registered Proprietor of a trademark can create establish and protect the goodwill of his products or services, he can stop other traders from unlawfully using his trademark, sue for damages and secure destruction of infringing goods and or labels.
The Government earns revenue as a fee for registration and protection of registration of trademarks
The Legal professionals render services to the entrepreneurs regarding selection registration and protection of trademarks and get remunerations for the same
The Purchaser and ultimately Consumers of goods and services get options to choose the best.

The register of trademark currently maintained in electronic form contains inter alia the trademark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trademark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.

But the basic principle is that the trademark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation.
It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of a registered trademark?

Once the Notice of Opposition is filed, the Registrar takes it on record and serves a copy to the Applicant inviting their attention to file a Counter Statement and marks the status of Trademark as opposed. The Applicant is required to file the Counter Statement within two months of the receipt of Notice of Opposition. If the Applicant fails to file the Counter Statement within the stipulated time, the Applicant is deemed to have abandoned his application.

After filing of Counter Statement by the applicant, the opponent is required to file evidence/affidavit by way of affidavit in support of the opposition within two months of receipt of the Counter Statement. In the same way, the Applicant is also required to file any evidence in support of the application within two months of the receipt of the copy of the affidavit/evidence filed by the Opponent.

Once the evidence is filed by both the parties, the matter is heard by the Trade Marks Registry enabling the parties to submit oral submissions. The Registrar shall give prior notice to the parties informing them of the hearing.

If a person fails to file an opposition within the specified period of months, then the trademark gets registered because of such failure and the owner of the trademark has a remedy to file a suit for infringement in the court of law.

The Applicant is required to file the Counter Statement within two months of the receipt of Notice of Opposition. If the Applicant fails to file the Counter Statement within the stipulated time, the Applicant is deemed to have abandoned his application.

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