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Legal Tips on Resolving the Issue of Trademark Opposition: Lawyers Advice

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Legal Tips on Resolving the Issue of Trademark Opposition: Lawyers Advice

Whenever the process for the registration of trademark is in process, there can be two situations in which the refusal can be raised against your trademark registration. One of the situation is the Trademark opposition and another situation is the Trademark objection. Generally Trademark opposition is filed by the third party against the Registration which is mentioned in the Journal. When the trademark design is submitted to the examiner for the purposes of the registration, it is being reviewed by him and if he finds that the trademark can be qualified for the registration, he publishes it in the Trademark Journal. After publishing the Trademark in the Journal, it can enable any third parties to view the same and file the trademark opposition against it.

Who can file the Trademark Application
Section 21 of the Trademarks Act 1999
, provides for who all can file for the Trademark opposition. According to this section any individuals, companies, trusts, partnership firms etc. can file for the opposition. However it is not necessary that the person who is opposing the trademark, should be a registered proprietor of any mark. He can be a customer or purchaser, or any person who is likely to use the goods. They would be entitled for the trademark opposition if they file the same within three months from the publication of the Trademark. However the same can be extended by period of one month. If any two or more individuals have any same issues against the published trademark, then both the individuals can join hands together as the opponents. If no opposition is filed within the stipulated period as mentioned above, the marks proceed to the registration.

Legal Recourse available and to be taken during Opposition of a Trademark
The Indian Law has prescribed a certain procedure to be followed by the opposite party for the purpose of filing the opposition for the trademark. The opposition party is required to file the opposition within the four months from the date when the advertisement was made in the Trademark Journal. Whenever there is a requirement to defend the opposition of the trademark, the major thing to be considered is the limitation period. The party whose trademark registration has been challenged need to look whether the opponent has filed the opposition notice after satisfaction of all the requirements and within the prescribed time period. The Trademark applicant has the right of hearing in the court of law. After receiving the notice from the trademark registry they have the right to go through all the issues raised and can prepare for the proceedings in the court of law. The registrar has the right to give a chance of hearing to both the parties and only after that they could take the required decision. In the case of S. Syed Mohideen v. P. Soluchana Bai, Civil Appeal No. 2758 of 2015 (Arising out of SLS (C) No. 12671 of 2014), it was cited that both the applicant as well as the opponent should be given their respective opportunities to be heard and filing the evidence.

It was also held in the case of Sahil Kohli v. Registrar of Trade Mark and Ors. OA/6-8/2018/TM/DEL, it was held that it is mandatory to file the evidence against the Applicant of the trademark, within two months and no extension of the same can be provided under section 45(1). If the evidence is not filed in time, the opposition as filed by the opponent can be abandoned and no further time would be allotted to him.
If the owner of the Trademark wants they can go for the out of court or free settlements for the purpose of avoiding in engaging in long proceedings and saving their reputataion.

It is important for the applicant to hire a suitable attorney for the Trade Mark which can assist the applicant in better responding of the opposition notice which has been filed by the Opponents. When the proceeding are going on, the applicants and their attorneys, should ask for the valuable information which could help to build a strong defence which could help the parties to bring a stronger case. It would be really difficult for the applicant to respond to all the notices and meet the requirement without any proper assistance and guidance. If the parties are not satisfied with the decision given by the registrar, the proceedings can be challenged through an appeal before IPAB within the period of three months from the date when the decision has been received.

Filing the Counter-Statement
Another significant right of the Trademark applicant is that they can opt for filing of the Counter Statement. Rule 44 of The Trademark Rules of 2017 provides that after the Opponent files the opposition notice, the applicant of the Trademark has the right to file a counter statement. This statement should be filed in the form TM-O (Trademark-opposition). The time period prescribed for filing of counter-statement is 2 months from the date of receipt of the Opposition notice, and the time period of 2 months is not expendable. The counter-statement files should comprise of the paragraph wise counter statement of every ground which has been made in the Opposition notice given out by the opponent and a verification that is required to be signed by the individual making the counter statement. It should state the date and the place at which the statement is signed.

It’s not always necessary that the applicant before registering the mark, check whether such a trademark already exists. Therefore for avoiding any kind of opposition or opposition notices, it is really significant for the applicant to make a proper market research before applying for the trademark registrations. Involving the parties in any kind of the proceedings can affect the reputation of the parties as well.
Authored By: Adv. Anant Sharma & Bheeni Goyal

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