Trademark Opposition in India

Overview:

When the application is published in the Trademark Journal for advertisement, there are chances that the third party can file objections against registration of the mark. The objections raised by the third party are otherwise termed trademark oppositions. Section 21 of the Trademark Act,1999 discusses the procedure for trademark opposition in India.

Trademark Opposition Process:

Trademark Opposition process is divided into three stages:

  1. Filing stage
  2. Evidence stage
  3. Hearing stage

I. Filing Stage

Filing Notice of Opposition 

Procedures for filing the Notice of Opposition

Filing Format TM-O
Timeline 4 Months from the date of publication
Govt. fees Rs.3000/- (Manual), Rs.2,700 (E-Filing)
Details The Notice of Opposition shall detail the grounds with the relevant sections of the Trademarks Act, 1999

Filing Counter Statement

Filing Format TM-O
Timeline 2 Months from the date of receipt of notice of opposition
Govt. fees Rs.3000/- (Manual), Rs.2,700 (E-Filing)
Details The counter statement shall  have the necessary facts to defend the application by advancing the arguments to support the trademark registration.

II. Evidence Stage

Filing Evidence in Support of Opposition

Procedures for filing the Evidence in Support of Opposition

Filing Format

In the Affidavit Format

Timeline

2 Months from the date of receipt of Counter Statement

Govt. fees

N/A

Details

The evidence shall be filed in affidavit format with supporting evidence to prove the merits of the opponent's trademark and facts why the applicants’ trademark shall not be registered

Requirement

Mandatory

Filing Evidence in Support of Application

Procedures for filing the Evidence in Support of Application

Filing Format

In the Affidavit Format

Timeline

2 Months from the date of receipt of Evidence in Support of Application

Govt. fees

N/A

Details

The evidence shall be filed in affidavit format with supporting evidence to prove the merits of the applicant’s trademark and facts why the opposition shall not be entertained

Reply Evidence

Procedures for filing the Evidence in Support of Application

Filing Format

In the Affidavit Format

Timeline

1 Month from the date of receipt of Evidence in Support of Application

Govt. fees

N/A

Details

The evidence shall be filed in affidavit format with supporting evidence to prove the merits of the applicant’s trademark and facts why the opposition shall not be entertained

III. Hearing Stage

Opposition Show Cause Hearing

Both applicant and opponent or their authorised attorneys shall appear before the Assistant Registrar of Trademarks to advance their submission to support their case. The Registrar may also allow the parties to file the written submission after the oral agreement. 

To sum up the process in brief:

  • 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 opposition in the form of 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.