What is Trademark Opposition?
A trademark opposition is a legal proceeding whereby a party disputes another party’s right to register a trademark with the Intellectual. The Indian Trademark Office will not register a trademark if it finds that it is confusingly similar to an existing trademark. If an opposition is filed, the trademark office will suspend the registration process and require the parties to participate in the opposition proceedings. The Indian Trademark Registry headed by the Registrar of Trademarks who will hear evidence and argument from both sides before rendering their decision. If the Registrar decides in favor of the opposer, the registration will be denied. If the Registrar decides in favor of the applicant, the registration will be allowed to proceed. Either way, the decision of the Registrar can be appealed to a High Court.
Trademark Opposition Process
Who can file the Trademark Opposition against the trademark registration?
Any person can oppose the trademark application by filing a Notice of Opposition within four months of the date of publication along with the prescribed fees. An important point to be noted here is that- the section says Any Person- which indicates that even if the party isn’t related to the brand, still they can file the opposition within the trademark opposition period.
When can the opponent file the Opposition:
Well, once the mark is published in the journal, the opposing party has 4 months to file the opposition against the trademark, beyond which his right to oppose is abandoned.
Who are the Parties to the Opposition?
The person filing for the opposition is known as an Opponent and it may not be necessarily a registered proprietor of a trademark, a third-party opponent can also file for the opposition, a purchaser, a customer, or a member of the public, who is likely to use the goods or services of the trademark but not necessarily someone who has a registered trademark!!
What is the process of opposition?
The process of trademark opposition is complicated and requires proper attention by the trademark owners to avoid trademark cancellation. To effectively handle the opposition, it is important that all the steps are complied with, right from filing counter-statements to filing evidence in support of your application to attending hearings. Missing any of these would result in grave consequences. The Trademark Opposition process is divided into three stages:
- Filing stage
- Evidence stage
- Hearing stage
Once the application is to be opposed, the opponent has to file an application of opposition under form TM-O within 4 months. Upon filing the Opposition, the registry will send the notice of opposition to the applicant and the applicants have to file the reply to the opposition in the form of a counter-statement within 2 months of receiving the notice of opposition.
The counter-statement will have the denials of the averments stated in the notice of the opposition and the applicant will have given supporting evidence for the same. On submission of the counter-statement, the registry will require the parties to submit supporting documents and evidence in support of their oppositions and claims, after which a hearing date will be fixed. On hearing both the parties, the register will give its decision of acceptance or denial of the mark.
Effective Ways to Defend the Oppositions
Trademark oppositions being time-centric requires you to handle them effectively and if missed can lead to the abandonment of your brand name. Here is what you must do to tackle the third-party oppositions to protect and preserve your trademark.
1. Understand the basics of trademark opposition
Before you can effectively defend a trademark opposition filed by a third party, it is important to understand the basics of this legal proceeding. A trademark opposition is a formal procedure in which someone who believes that your trademark infringes on their own rights can file an objection with the IPIndia. The Indian Trademark Office will then review the objection and decide whether or not to allow your trademark to be registered.
If you receive a notice of opposition from the Indian Trademark Office, you will have the opportunity to respond in writing.
Evaluate the type of the opposition filed against your trademark and if it seems legitimate in nature it can be clearly justified and considered. But in mischievous oppositions, hindrances must be handled carefully. The energy drink company Monster had opposed the trademark of Vermonster – a beer company, stating that it would confuse the consumers. But the US Department of Commerce highlighted that the services provided were very different. The opposition seemed like bullying and not a legitimate case.
Similarly, one can identify the following points as the intention of the opponent in the case of mischievous oppositions as a part of their defense:
- Misusing the law to hinder the registration process
- Bullying the smaller business even when the case holds no merit
- Claim harassment by the Opponent
2. Follow through with Due Diligence:
Before filing for the trademark application, it is vital to ensure that your trademark is unique and creative. Search for potential threats of opposition and ensure there is no similarity between your mark and any other earlier mark. This can be done by:
- Ensuring goodwill attached to your mark
- Establishing that your trademark holds a unique meaning
- Using different colors from similar marks
- Proving the distinctiveness of the mark by ensuring your device or shape is different
- Highlight the earlier trademark rights if available
3. Hire an experienced attorney
One of the best ways to defend a trademark opposition is to hire an experienced attorney. An experienced attorney can help you navigate the opposition process and ensure that your rights are fully protected against such trademark objections. If you want to stay relaxed and have the work done, it is always recommended to hire a professional trademark attorney who can undertake end-to-end opposition compliances. Always, it is very important to choose your attorney as their expertise will help you protect the brand.
4. File your counter reply with evidence
The Counterstatement as per Rule 44 of the Trademark rules 2017 must include the counters made in lieu of the grounds raised in the opposition. Which would be that:
- There are no violations of the Absolute and Relative Grounds of refusal as under Section 9 and 11 respectively.
- And follow up with a verification page and annexures that are notarised and attested.
If you have not filed the counter statement within 2 months, then it would be considered abandoned for non-prosecution. For example, if the opposition is filed under Section 11 for the phonetical similarity of the wordmark ‘Toogle’ with that of Google, then you can highlight the difference in the font, color, and the services that you provide.
All copies of evidence supporting your trademark must be submitted before the registrar along with a copy to the opponent in order to substantiate your stance. The evidence would include your advertising endeavors, use of the wordmark on your receipts, and the documents on the sales turnover and profits received in trade.
5. Negotiate a settlement
In some cases, it may be possible to negotiate a settlement with the opposing party who filed the trademark opposition. A settlement could involve things like agreeing to The trademark owner can enter into a coexistence agreement to avoid any consumer confusion claim in the future.
6. Amend your application
Another way to defend against a trademark opposition is to amend your trademark application. For example, you may be able to narrow the scope of your mark or change the goods or services that are covered by your mark against the alleged similar trademark of the opponent.
7. Make steller arguments in your favor
If the opposition is not resolved through negotiation or mediation, the next step is to go to trial. This is a formal process in which both sides present their arguments and evidence to the Registrar of Trademarks. The evidence should prove that your trademark does not infringe on the rights of the person who filed the opposition. This evidence can include things like the history of your trademark, evidence that you are using it in a unique way, or proof that the person who filed the opposition does not have a valid claim to the trademark.
The panel will then decide whether or not the opposition should be upheld.
8. Appeal the decision
If you lose a trademark opposition, the trademark applicant can appeal the decision of the trademark examining attorney to a higher court to grant the trademark registration (previously it was filed before the Intellectual Property Appellate Board). This trademark trial legal process, so it is important to have an experienced attorney on your side if you decide to take this step. Defending a trademark opposition can be a complex and difficult process. However, it is important to remember that you have rights and there are ways to protect those rights. If you have received a notice of opposition, the best course of action is to consult with an experienced attorney who can help you understand your options and choose the best course of action for your particular case.
Points to Remember while defending the opposition
- You have to understand the purpose and intent of the opponent to raise the opposition and act accordingly.
- Identify if your opposition has been filed in order to slow down the registration process and procedure.
- Your counters must be specific to the grounds as raised by the opponent.
Take all the necessary steps to handle the opponent, such as filing the counterstatement and appearing for all the hearings, and filing the needed documents.