Quick Tour (Trademark Opposition)

Know more about Trademark Opposition

After advertisement of a trademark in the Trade Marks Journal, any person can oppose registration of the trademark for a period of 3 months (which may be extended by a period not exceeding 1 month). Trademark opposition filings can be done only at the Trademark Registrar’s office and cannot be taken directly to a Court or the Appellate Board (IPAB). If a trademark opposition is successful, the registration of the trademark will be refused. If the trademark opposition application is rejected, the trademark will be registered.

 

Brief details about Trademark Opposition

1) Who can oppose a trademark?

Section 21 of the Trademarks Act, 1999 says that “any person” who wants to oppose a trademark application can do so by filing a Notice of Opposition on the prescribed form along with the prescribed fee. The opponent does not necessarily have to be a registered proprietor of a trademark. He can be a purchaser, customer or a member of the public likely to use the goods. The rationale behind this is that the opponent is not only representing himself but the public at large because having two similar marks in the market can only result in confusion amongst the public at large.

 

2) What is the time limit for filing an Opposition?

The third party has to file the trademark opposition within 3 months (extendable by 1 month) from the date of publication of the trademark.

 

3) What are the grounds for filing a Trademark Opposition in India?

The various grounds on the basis of which a person may initiate Opposition Proceedings are:

  • The trademark is similar or identical to an earlier or existing registered trademark.
  • The mark is devoid of distinctive character.
  • The mark is descriptive in nature.
  • Application for the trademark is made with bad faith.
  • The mark is customary in the current language or in the established practices of business.
  • The trademark is likely to deceive the public or cause confusion.
  • The mark is contrary to the law or is prevented by law.
  • The trademark is prohibited under the Emblem and Names Act, 1950
  • The mark contains matters that are likely to hurt religious feelings of any class or section of people.

 

4) Where to file the Notice of Opposition in India?

The notice of opposition should be filed at the trademark registry where the application for the conflicting mark has been filed. For instance, if the application is filed at the Mumbai office of the Trade Mark Registry, then the opposition proceedings must initiate in Mumbai only.

1

Filing a Notice of Opposition/Filing a Counter-Statement

2

Filing of Evidence in support of Opposition

3

Filing of Evidence in support of Counter Statement

4

Call for Hearing

5

Registration or Rejection

Advantages

There are no advantages.

Disadvantages

There are no disadvantages.