Top Tips for Solving the Problem of Opposition to a Trademark: Lawyers Advice on IP Laws of India | IP Law Firm in Delhi NCR | IP Law Firm in India | IP Attorney in India | IP Attorney in Delhi NCR | IP Lawyer in Delhi NCR

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Trademark Opposition is a process initiated by a third party after the application has been acknowledged by the Trademark Registry. This means that the institution of a trademark opposition begins after a trademark application has successfully met all the initial requirements and has been advertised in the Trademark journal for the general public. The rationale behind doing this is so that the common people get a chance to put forth an opposition against the registration if in their opinion, the trademark could be misleading or similar to already existing trademarks.

It has to be noted that after an opponent files an opposition, your trademark status will reflect as ‘Opposed’.

What is the time limit for filing an Opposition?
A trademark opposition has to be filed within 4 months from the date of publication in the Trademark Journal.

Who can file a Trademark Opposition?
Section 21 of the Trademarks Act, 1999 has laid down that ‘any person’ can submit a notice of opposition. This means that any individual, company, partnership firm or trust can file a notice of opposition. In fact, it is even possible for two or more persons to be joined together as opponents if they have the same issues against any trademark.

Grounds for filing a Trademark Opposition: –
The grounds upon which a person may begin Opposition proceedings are similar to the grounds of refusal laid down in Sections 9 and 11 of the Trademarks Act, 1999:
• The trademark is similar or the same as an existing registered trademark or lacking any distinguishing characteristics.
• The mark is descriptive in nature or the application for the trademark is made with malafide intention.
• The mark is a custom in the existing languages or in the existing practices of business or consists of content that is likely to hurt religious sentiments of any class or section of people.
• The trademark is likely to mislead the public or cause a misunderstanding or is conflicting with the law or is prohibited by law.
• The trademark is banned under the Emblem and Names Act, 1950.

In the Madras High Court judgement in the case of Technova Tapes v. Technova Imaging (O.S.A.No.59 of 2017), it was held that trademarks with same names can still be allowed to exist if the kind of business they are into are different and was registered without malafide intention of gaining advantage of already existing goodwill.

Where does filing of Notice of Opposition happen?
The notice of opposition must be filed at the trademark registry where the application for registration of the conflicting mark was filed. For instance, if the application is filed at the Delhi office of the Trademark Registry, then the proceedings of Opposition must begin in Delhi only.

Important points to remember about the Procedure of Opposition: –
As per the new Trademark Rules that came in 2017, the various stages involved in the procedure of Trademark Opposition are laid down as following:
• Notice of Opposition: As per Rule 42 and Rule 43, the notice of opposition can be filed by any person, within 4 months from the date of advertisement in Trademark Journal.
• Counter-Statement: As per Rule 44, the applicant for the trademark needs to file a counter-statement within 2 months of the receipt of the notice of opposition. If the applicant fails to file the counter statement within 2 months, it is assumed that the applicant has abandoned the trademark. It must be noted that in the Calcutta High Court judgement in the case of Shyam Steel Industries Ltd. v. Shyam Sel and Power Ltd. (APO No. 91 of 2019), it was held that despite a delay in filing of counter-statement leading to assumption of abandonment, if Court so believes that coexistence of two conflicting trademarks could create confusion, the matter can still be taken up.
• Evidence supporting of Opposition: As per Rule 45, the Opponent has to file evidence, through an Affidavit, within 2 months (extendable by one month) of the receival of the counter-statement filed by the Applicant. There is also an option for the Opponent to not file any evidence and simply rely on facts presented in the Notice of Opposition, by writing to the Registrar.
• Evidence supporting Application: As per Rule 46, similar to Evidence supporting Opposition, the applicant has an option to file Evidence supporting Application, within 2 months of receiving the evidence of the Opponent.
• Evidence in reply: As per Rule 47, the Opponent is given another 1 month (extendable by 1 month) to file evidence to respond to the Evidence supporting Application.
• Hearing: As per Rule 50, upon consideration of the notice of opposition, Applicant’s counter-statement, and all evidences submitted, the Registrar shall initiate a hearing. Within 14 days of receipt of notice of hearing, it is essential for the parties to notify the Registrar on whether they intent to appear in the matter. Based on that, the matter is heard and decided upon the merits, by the Registrar.
• Registration or rejection: As per Rule 50, the trademark will be registered and a registration certificate will be issued, if the Registrar decides in support of the Applicant. However, the trademark application stands as rejected, if the Registrar decides in support of the Opponent.

In conclusion, trademark opposition is a vital and imperative stage in the registration procedure. It is one of the most useful methods in protecting a trademark and securing a brand. Since the limitation period play a significant role in the decision of registration, the registered owners/ former owners are advised to be alert in securing their trademarks by starting a suitable proceeding at the right time.
Additional Links: –
http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_312_1_TRADE_MARKS_RULES_2017__English.pdf

Authored By: Adv. Anant Sharma & Parinay Gupta