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What is Trademark Opposition?

Trademark opposition is an essential part of the trademark registration process in India. Once a trademark has been published in the Trademarks Journal, it may be challenged. Any aggrieved individual may challenge the registration of a mark published in the Trademark Journal by filing a notice of opposition with the Registry in the specified manner and within the stipulated time, according to the Trademark Act of 1999.

Trademark Opposition Duration
According to the Act, anybody can file a notice of opposition against a trademark within four months of the date the mark was first advertised or re-advertised in the Trade Marks Journal. It’s worth noting that the Opponent does not have to have an application or registration in India to challenge a trade mark.
The following are the different grounds on which a trade mark may be challenged in India:
• Absolute grounds of refusal under Section 9 of the Act, i.e. the trade mark is not distinctive or capable of distinguishing the Applicant’s goods/services from that of others;
• Relative grounds of refusal under Section 11 of the Act, i.e. the trade mark is phonetically, visually, conceptually, confusingly, and deceptively similar/identical to the Opponents trademark. Other similar grounds, depending on the facts of the case, such as the applicants’ well-known trade mark, copyright, geographical indication, and so on.

Opponent files a Notice of Opposition.
The following are the measures involved in trademark opposition:
• Within four months of receiving the notice of opposition, the Registrar shall serve a copy to the Applicant of the Trade Mark.
• Within two months of receiving the notice of opposition, the Applicant shall file a counter statement specifying the facts alleged in the notice of opposition that the Applicant acknowledges. Counterstatements can now be filed more quickly thanks to the revised Trademark Rules of 2017. In order to expedite the opposition proceedings, the applicant has the option of filing counter-statements to the opposition lodged against the application.
• If the Applicant fails to file its counter statement within the deadline, the Applicant’s Trade Mark is considered abandoned for non-prosecution under Section 21(2).
• The opposition moves on to the proof stage if the Applicant files a counter argument.

Evidence Stage
• Within two months of the filing of the counter statement, the Registrar must serve a copy on the Opponent. The Opponent must file an affidavit as evidence in support of the opposition within two months of obtaining the counter argument.
• Within two months of receiving the affidavit by way of evidence in support of the opposition, the Registrar shall serve a copy on the Applicant.
• The Applicant shall file the affidavit by way of evidence in support of the application within two months of receiving the affidavit by way of evidence in support of the opposition.
• Within two months of receiving the affidavit, the Registrar must serve a copy on the Opponent as proof in support of the application. The Applicant must file its affidavit by way of evidence in reply within two months of obtaining the affidavit by way of evidence in support of the application.
•A number of cases have been pardoned because of a delay in filing proofs. It was held in Hastimal Jain trading as Oswal Industries vs. Registrar of Trademarks (2000 IAD Delhi 709, 83 (2000) DLT 249, 2000 (52) DRJ 196) that relevant provisions of the law are merely advisory and not necessary. Furthermore, it is a well-established legal principle that procedural laws, even in civil cases, are handmaidens of justice who must not be able to hinder justice.

Hearing Stage
After hearing the parties and considering the facts, the Registrar will determine whether or not the Trade mark should be approved for registration. An aggrieved party will contest the Registrar’s decision in the opposition proceedings by filing an appeal with the Intellectual Property Appellate Board (IPAB).

Registration Stage
After completing the above, the application moves on to registration. If no objections to the trademark’s registration were raised during the four-month advertisement/publication period, then the trademark is given a self-registration certificate within one week. If completed, the registration is valid for ten years, after which it must be renewed within a certain time frame.

This are the procedure that is followed in case there is an opposition phase, one can avoid all these hassle by the following steps like conducting a trademark search, taking legal advice from an IP lawyer. And most importantly by using a mark devoid of distinctiveness and uniqueness complying with Sections 11 of the Trademark Act of 1999.
Authored By: Adv. Anant Sharma & Swayamsiddha Das