Trademark Opposed

Grounds for trademark opposition

There can be many reasons for trademark opposition which are mentioned below:

• The trademark is identical or similar to an earlier or existing registered trademark.
• Trademark is without particular person.
• The Trademark is illustrative.
• The brand name/ Trademark enlistment application has been made in dishonesty.
• The Trademark or brand name is standard in the ongoing language as well as laid out practices of a business.
• The Trademark/ brand name is probably going to misdirect or create turmoil among general society.
• The trademark is contrary to law or prohibited by law.
• Trademark is prohibited under the Symbols and Names Act, 1950.
• Trademarks include things which are likely to hurt the religious sentiments of any class or section of people.

Trademark opposition process

Notice of trademark opposition

Any person can file a trademark opposition with the Registrar by giving notice in Form TM-O and paying fee within 4 months from the date of advertisement of the registration application in the Trademark Journal.

The notice must contain details of the application (trademark registration application), details of the opposing party and the grounds of opposition. The Registrar must give a copy of the notice of opposition to the applicant (the person filing the trademark registration application).

Counter statement for notice of trademark opposition

The applicant must file his counter statement to the notice of opposition with the Registrar in Form TM-O within 2 months of receipt of the copy of the notice of opposition stating his facts. The Registrar shall give a copy of the counter statement to the opposite party.

Suppose the applicant does not file a counter statement within 2 months of receiving the notice of opposition, the Registrar will deem that the trademark registration application has been abandoned and thus will not proceed to register the trademark.

Evidence for and against trademark opposition

The opposing party must provide evidence supporting its notice of opposition to the Registrar within 2 months of receipt of a copy of the counterstatement filed by the applicant. The contradicting party ought to likewise send all copy of the proof to the applicant.

On receipt of the evidence copy by the opposite party, the applicant should file his evidence in support of the trademark registration application within 2 months of receipt of the evidence copy of the opposite party. The applicant must send his evidence to both the Registrar and the opposition.

The opposite party may file further evidence within 1 month of receipt of the applicant's evidence copies. The opposing party must submit additional evidence to both the Registrar and the applicant.

Hearing and decision regarding trademark opposition

The Registrar, after receiving the evidence of both the parties and additional evidence of the opposite party, shall give notice to both the parties for the first date of hearing. If the opposing party does not appear on the hearing date, the opposition will be dismissed, and the Registrar will register the trademark.

If the applicant does not appear on the hearing date, the registration application will be considered canceled and rejected. The Registrar will consider the written arguments submitted by both parties in the proceedings.

After hearing both the parties and considering the evidence presented by them, the Registrar will decide whether to proceed with the trademark registration or reject the trademark registration application. The decision of the Registrar will be communicated to both the parties in writing at the addresses given by them.

Time limit for trademark opposition

Any person can oppose a trademark registration up to three months (which cannot be extended to a period exceeding one month) after the trademark is advertised in the Trade Marks Journal. Trademark opposition filing can only be done at the office of the Trademark Registrar and cannot be taken directly to the court or Appellate Board (IPAB).

If the trademark opposition is successful, the registration of the trademark will be rejected. If the trademark opposition application is rejected the brand will get registered.

Filing a trademark opposition

Details of the trademark application against which the opposition has been filed.

The application number against which the opposition is filed, as well as an indication of the goods or services listed in the trade mark application against which the opposition is filed and the name of the applicant for the trade mark.

Description of the prior mark or prior right on which the opposition is based

If the opposition is due to an existing trademark application or registered trademark, the application number or registration number of the earlier mark. If the opposition is based on a mark that is allegedly considered a well-known trade mark, an indication of the country or territory in which the earlier mark is considered well-known.

Description of the opposing side

If earlier marks or If recorded by the owner of the mark or right, his name and address and an indication that he is the owner of such mark or right. If an opposition is filed by a successor in ownership of the registered owner of a trademark who has not yet been registered as the new owner, the name and address of the opposite party and an indication of the date on which the application for registration was made Is. The new owner was welcomed by the appropriate office. If the opposite party has no place of business in India, the name of the opposite party and his address for service in India.

The benefits of trademark opposition are:

• Trademark opposition plays a very important role as it is a chance for the registered trademark owners to prevent any other marks which may hinder their brand or create any possible uncertainty in the market.
• As the brand is built by public popularity and demand, it is very necessary to consult the public for approval regarding the regressibility of the applied trademark.
• Member of the public or contestant
• Trademark opposition saves time and money instead of getting involved in multiple other jurisdictions. Opposition proceedings are generally a less expensive and quicker means for parties to a trademark application to settle conflicting trademark rights.
• This is essentially a process to protect your trademark from being misused by others or to prevent someone from trying to take advantage of your creativity or efforts without your approval.

The grounds on which the opposition is based

Form TM-5

To oppose a trademark form, TM-5 must be filed by the opponent. As per the application, the trademark opposition should be filed with the appropriate trademark office. The details must be contained in TM-5 form:

Details about trademark application

• Impugned application number
• Indication of goods or services by trademark application
• Indication of goods or services by trademark application

Details about the opposing party

• If the opposition is filed by the trademark owner of a prior mark,

The name and address of the trademark owner and an indication that he is the trademark owner of such trademark.

• If a trademark licensee files an opposition

The name and address of the trademark licensee along with an indication that he or she is authorized to file the opposition.

• If a successor files an opposition against the registered trademark owner,

Name and address of the successor and indication of the date on which the application for registration of the new owner was received by the appropriate office or, where this information is not available, sent. Appropriate office.

• If any party outside India files a protest then the opponent

Name and address of the party and address is Service of India

The trademark opponent or an authorized person who is familiar with the facts of the case must sign the notice of opposition.

Difference between trademark objection and trademark opposition

Most of the persons are confused between the objection of trademark and trademark opposition. We have a table to explain the basic differences between trademark objection and trademark opposition.

Trademark objection trademark opposition

• A trademark examiner issues a trademark objection. A trademark faces opposition from a third party.
• There is no need to pay fees to anyone. The opposition will also have to deposit the fees along with the reply.
• Reply will have to be filed within a month. The reply must be submitted within three months (which cannot exceed one month)
• The Trademark objection is important part of the Trademark opposed Process. Trademark opposition is a separate process.
• If no response is received from the applicant, the trademark is removed. Same is the case with trademark opposition; If no response is received the trademark will be removed.
• Rejection can be appealed. An appeal can be made after the decision has been passed.

Who can apply for trademark opposition proceedings?

According to Section 21 of the Trademark Act 1999, “any person” can file a notice of opposition. People filing trademark opposition can be:

• Any legal person or company, partnership firm, LLP, a private company, business, etc.
• Even trademark opposition can be filed by an Indian or foreign client.
• Member of the public or contestant
• Additionally, if two or more persons have similar issues over a trademark, they can be joined together as opponents.
• The owner of a previously registered-first trademark application or registration involves a similar trademark for similar goods.
• Former user – a person who has applied a previous or similar trademark to the customer, but who has not registered his trademark.