Trademark Opposition

Trademark opposition is an important juncture in the TM Registration Procedure in India. A trademark application does not yet have exclusive rights but allows any third party to oppose it after an Examiner has allowed, but before registration. Only unique and not-commuting trademarks are protected with the help of this legal method as prescribed by The Trade Marks Act, 1999.

There are four months from the publication of a trade mark registration application in the Trade Marks Journal for anyone to object – whether you’re an individual or an organisation. The applicant needs to answer and oppose the trademark against the opponent, who is a person filing an opposition.

There are many reasons that you can object a trademark, including but not limited to the fact that it is similar to an existing someone else’s mark, or that it will be misleading, its terms are deceptive and / or if the mark itself does not display uniqueness distinction. It’s a necessary weapon in the protection of famous marks from infringement and dilution. Both sides will be asked for written statements and any supporting documents, and they could be required to attend a hearing. Each application must be reviewed by the Registrar to decide if a trade mark should fall or succeed.

Understanding the Trademark Opposition

Sections 9(1), Section 11 and Section 21 of the Trademark Act 1999 allow for objection or oppositions against the applied Trademark. In these two scenarios, the filing trademark could be trapped in between application process. Trademark Objections are brought up by the registrar/examiner when they notice any semblance to already registered Trademark.

Trademark Opposition is filed by a Third party. The posting of the Trademark in the journal. Its in open domain for every one, if any person or Third party-facing problems from the Trademark they can challenge, that is oppose within four months from the publishing date. It is designed to protect the intellectual property (of others) so as to preclude anyone from infringing or revoking those intellectual property rights.

Who May File a Trademark Opposition and When?

Competitors, prior users and all other people from the general public that can show they are affected by your title registration in one way or another (for instance if it twists legal regulations).

However, the “any person” is maximally broad, and includes individuals, corporations, trusts, partnerships and any other legal entity.

1. Prior users: If another party has already been using a similar mark before the applicant did, they can oppose your registration.
2. Owners of registered trademarks: If the mark is similar to a registered trademark, the owner can file an opposition.
3. Competitors: Companies in the same or similar industries can oppose if they think that the new mark will cause confusion.
4. The public: The public can object, too, if they think the mark is deceptive or damaging, although this is less typical.
5. Industry watchdogs: Groups concerned about protecting trademarks could also object.

When to Oppose a Trademark Application

1. Four Months: The statement of opposition must be filed within 4 months from the publication date of the application in the Trademarks Journal.
2. Post Publication -Filing of Opposition is envisaged only after publication.
3. After Publication: It is important to watch the Trademarks Journal for published marks and if an opposition is required, you must act quickly.

Grounds for Trademark Opposition

There are plenty of things you might consider in order to oppose a trademark. Following are some of the bases for opposing a Trademark:

1. Deceptively similar mark: If the trademark applied by the applicant is identical or deceptive and may cause deceptiveness in trade s(Confusion to the customers) then third party can Opposed blender.
2. Genericness: The generic nature of the term (which defines any product or service which may not be registered and refused).
3. Geographical Indication: In case the applied Trademark is consisting of any geographical designation, then consider that it can’t be registered as a Trademark and may be opposed.
4. Well-Known Mark: Many of the brands in market has its unique identity and possesses a well-known mark, in such case if an applicant filed for that Mark then it is very high probability of getting objection.
5. Disallowed Symbols : It may be noted that national symbol should not usually form part of trademark and if applicant had filed a trade mark using such national symbol, objections can be raised so that they cannot do use it in future for registration as Trademark.
6. Celebrity: A majority of the marks or names are those that represent multiple famous people. Such names can be thrown as Opposition as it may defame that person.
7. Prior User: A person who is already using a trademark, albeit not registered but if they are the prior user of such mark can raise objections on the applied mark that looks alike.

Documents Required for Trademark Oppositions

To oppose a trade mark you need to complete and file a Notice of Opposition (Form TM-O) at the Registrar of Trade Marks accompanied by documents/evidence on which opposition is being based and fee.

Such notice shall indicate the reasons for opposition with specification of each mark objected to, information about the trademark application or applications and date of filing of applicant’s or opponent’s application(s); and details about both applicant and opponent.

1. Opposition (Form TM-O): This is the application that starts it all.

2. Details of the application : The notice should include the application number of the mark against which the opposition is lodged.

3. Basis of Opposition: You must make it crystal clear why youre opposing this trademark registration e.g., their mark is confusingly similar to yours, or their mark isnt distinctive enough.

4. Information about the Applicant and Opponent: Give information on the applicant (who wants to register) the opponent (the person opposing).

5. Proof: papers that serve to prove (petition the grounds for) the opposition. This may include:

1. Affidavits: Sworn statements in support of the opposition.
2. Evidence of Use: Evidence that a similar mark is in use, such as copies of sale receipts, images of the products, advertisements.
3. Proof of Government Registrations: If objection is on the basis of a former registration, the certificate of previous registration.

6. Power of Attorney – In case the opponent is represented through an attorney, this Power of Attorney provides the authority to the attorney to act on your behalf.

7. Fees: Submit the correct fee for filing the Notice of Opposition.

8. Counter Statement: Applicant will then have a chance to submit a counter-statement to the opposition.

9. Hearing Statements: If the opposition is contested, hearing statements may be requested from both parties.

10. Adjournment requests: Where appropriate, parties may apply for adjournments of the hearing.

Trademark Opposition Procedure in India

The procedure of Trademark Opposition is:

Notice of Trademark Opposition

Any person can oppose the registration by providing a notice in Form TM-O and paying the prescribed fee to the Registrar 4 months from date of publication of such application in trademark Journal.

A notice must indicate application (trademark registration application) particulars, the opponent particulars and the grounds of opposition. This notice of opposition has to be communicated by the Registrar to the applicant (the person who applied for the registration of a trademark).

2. Opposition to Register-Form Required in 37 C.F.R.

The opponent shall submit the counterstatement to the notice of opposition with the Registrar in Form TM-O within two months from receipt of a copy of notice of opposition and setting out their grounds. The counterstatement will be served to the other side by the Registrar.

If the application for registering a trade mark is not accompanied by the counter statement then, on an expiry of two months after notice of opposition given to him, if counter-statement has not been so filed, the registrar shall register that trade mark.

3. Evidence for and against trademark opposition

Evidence in support of a notice of opposition shall be filed by the opponent with the Registrar within 2 months from the date on which he is served with a copy of counter-statement made by the applicant. The evidence should also be posted or delivered to the applicant by the other party.

When the applicant receives the evidence copy of others, the registrant shall submit its evidence in favor of registration in 2 months from receipt of the document. The applicant needs to serve the evidence on both the Registrar and respondent.

The other party may also file additional evidences within 1 month after copies of the application have been served to him. The other party is left to put in more evidence for both the Registrar and the applicant.

4. Hearing and Determination on Opposition to Trademark

The Registrar upon receipt of evidence from each party and further evidence filed by the opposite party shall notify both parties as to the date set for 1st hearing. If no-one is present from the other side of the case on the hearing day, then opposition will be dismissed and the Registrar will register your trade mark.

In the event that applicant does not appear for the hearing, a determination will be made that applicant has abandoned and dismissed its registration application. The Registrar will take into account of the written arguments of both parties to the proceeding.

After hearing the both sides and examining the materials filed by them, the Registrar passes orders either to proceed with the registration or refuses to register the trademarks. The Registrar’s decision shall be provided in writing to each of the parties at the address given by them.

Conclusion

Trademark opposition process is the one of the significant part in Trademark Registration. TM opposition procedure comprises many stages such as, notice of TM-Os, countering statements, reply and hearing. The opposition of a trademark in the TM Opposing shields by preventing new trademarks from being registered and therefore is essentially, getting revenge. This provides the absolute right for a person or company to defend themselves against opposition and safeguard their brand.

But all the relevant documents needs to be filed while TM Registration itself. In the event that an applicant is struck by TM Opposition flow, then all related statements must be submitted to the registrar. These procedures can be averted if the applicant employs a suave and sensuous trademark advocate also.