What is Trademark Opposition: Lawyers Advice
Trademarks are unique names, symbols, phrases or graphic designs that differentiates the business, product or service, of one company or person from that of others. It represents the identity of the company, and for the same reason, are registered under an application made under Section 18 of the Trademarks Act, 1999. However, a refusal known as ‘Opposition’ may be raised in the process of trademark registration. Rules 42 to 51 of the Trade Marks Rules, 2017 provide for the provisions concerning Opposition to Registration.
If a trademark examiner reviews and approves the registration of a trademark, the mark will be published in the trademarks journal. This is done to enable a third party to view the trademark, so that he can raise any opposition against the registration of the same. Hence, a trademark objection is filed by a third-party, following which the “trademark status” of the application will be shown as “Opposed”. The limitation period to file the opposition is 4 months from the date of advertisement of the trademark in the journal. If the opportunity to oppose a trademark is missed, then the only viable remedy that remains is to file a petition for cancellation of that trademark before the Trademarks Registrar or the Intellectual Property Appellate Board.
Under Section 21 of the Trademarks Act, 1999, any person can file a notice of opposition. This includes individuals, companies, partnership firms as well as trusts. Two or more individuals who have the same issues against a trademark can be joined together as opponents. Normally, the individuals who file an opposition against a trademark application includes the owner of an earlier trademark application or registration with respect to a similar trademark concerning a similar good/service; or a person who has not sought the registration, but has used the same or a similar trademark prior to the present applicant, i.e. as a prior user.
The grounds on which a Trademark Opposition may be filed are enumerated under Section 9 (Absolute grounds of refusal) and Section 11(Relative grounds of refusal) of the Trademarks Act. The grounds are:
- The trademark is similar to the Opponent’s already existing, registered trademark;
- The mark for which Registration is applied for is devoid of any distinctive character;
- The mark resembles a well-known trademark of the opponent;
- The mark is general descriptive in nature;
- The trademark application has been made in bad faith or in a malafide interest;
- The mark is customary in the current language or in trade practices;
- The mark may deceive or cause confusion in the public;
- The mark is contrary to or prohibited by law including the Emblems and Names (Prevention of Improper Use) Act, 1950;
- The mark comprises of material that may hurt religious sentiments of people.
The opposition notice is to be filed at the trademark registry where the registration application of the conflicting trademark has been made. The process which follows the filing of the opposition are as given below:
- A Counter-statement or reply to the opposition must be filed within 2 months. There shall be no further extension to this period, and any failure to file the same shall be deemed as the abandonment of the mark. On the other hand, once the counter-statement is filed, it shall be sent to the Registry for review and in case all the formalities are met, the counter statement is then served on the Opponent by the Registry.
- Within a period of two months (extendable by 1 month) of receiving the counter statement, the Opponent has the opportunity to provide evidence in support of his opposition in form the of an Affidavit. Instead, he can also waive this opportunity and rely on the facts stated in the Opposition notice. The choice of the Opponent has to be informed to the Officials as well as the opposite party within the prescribed time limit, failing which, the opposition will be treated as abandoned.
- Within a period of 2 months of receiving the evidence or intimation of waiver by the Opponent, the Applicant has to file evidence supporting his counter statement or application. The Applicant can also opt to waive the right to submit evidence.
- The Opponent, within one month of receiving evidence or intimation of waiver from the Applicant, has the right to file additional evidence in support of his opposition. This opportunity has been provided so as to rebut the Applicant’s evidence and also to achieve some kind of finality in the proceedings.
- This is followed by a hearing ordinarily held within 3 months of completion of evidence. The parties are notified about the same. Both the parties are heard and the evidence is considered, following which the Registrar of Trademarks shall decide as to whether the trademark can be accepted or not.
- The party aggrieved by the decision made by the Registrar may challenge the same by way of an appeal before the Intellectual Property Appellate Board (IPAB).
Along with the understanding of the provisions related to trademark opposition, it is also important to discuss about the important case laws on the Opposition of Trademarks. The same shall be discussed below:
In the 2013 decision in the case of M/s. Jaguar Cars Limited v. M/s. Manufacture Des Montres Jaguar S.A. and Deputy Registrar of Trademarks (M.P. No. 53/2008 in OA/21/2008/TM/KOL), the Respondents had filed an application for registering the trademark “JAGUAR” in respect of watches and parts thereof, but excluding clocks. The Appellant, filed opposition on the grounds that the registration of the said trademark would cause confusion and also dilute the distinctiveness of their trademark also named as “JAGUAR”. The Intellectual Property Appellate Board stated that even though the Respondent was the prior user of the trademark for watches, the Appellant had registered its trademark in 1945 in relation to automobiles, and has earned a brand value and reputation in India. Therefore, even if the goods were dissimilar, there could be confusion in the minds of consumers as to sponsorship and the like. Thus, the Board allowed the Appellant’s opposition.
In yet another case of Sahil Kohli v. Registrar of Trade Mark and Ors. (OA/6-8/2018/TM/DEL), the topic of abandonment of opposition was considered. It was held in the present case that if the evidence is not filed within 2 months, and no extension of time was sought, then the opposition will be deemed to have been abandoned.
The Supreme Court in the 2015 decision in the case of Lal Babu Priyadarshi vs. Amritpal Singh (Civil Appeal No. 2138 of 2006) held that no person can use the name of a holy or religious book as a trademark. The Appellant in the present case had used the word “Ramayan” for incense sticks and perfumeries, the registration of which was opposed by the Respondent. The Court also held that the Appellant was not able to establish a reputation earned by the said mark, as more that 20 traders in the city as well as country uses the mark for their products.
In the case of Metropolitan Trading Company v. Mohanlal Agarwal and Ors. (TA/52/2003/TM/MUM), the registration of a trademark “ZODIAC” by the Respondents was opposed by the Appellants who were also the registered proprietors of the same trademark on the grounds of lack of distinctiveness as well as chance of confusion within the public. The appeal was allowed was held by the Intellectual Property Appellate Board of Chennai that for a trademark to be registered, it should be distinctive, and that when marks are identical, the same causes confusion and deception.
Trademark opposition is an effective remedy accessible by a registered proprietor or prior user of a trademark. All that the registered proprietor or prior user must do is to be attentive and cautious on trademark watch and initiate a suitable proceeding at the right time.
Authored By: Adv. Anant Sharma & Anjana Gopinath