Trademark opposition in India allows anyone who thinks that their rights are going to be affected to oppose an applicant’s attempt to register a mark in India before it becomes official, whereas infringement only allows them to do so after their rights have been violated. The opposition period lasts for 30 days from the date of publication in the Trade Marks Journal, during which any member of the public can file an objection.
Grounds to file Opposition
- 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 the religious feelings of any class or section of people.
Documents required to File Trademark Opposition
- Details of the Applicant
- Details of the Applicant’s mark
- Opposition notice
- Power of Attorney
- Details of the opponent
- Prior User Evidence
- Other supporting documents and evidence
- TM-O – Notice of Opposition.
Procedure for filing Trademark Opposition
- Notice of Opposition:
Once the Trademark is advertised in the Journal, Any person who wishes to oppose the mark can file a notice of opposition on a trademark within 4 months from the date of advertisement.
After receiving the notice of opposition, the applicant has to file a counter statement within 2 months of the receipt of the notice of opposition. If the Counter-Statement is not filed within 2 months, the Application shall be deemed to be abandoned by the trademark owner.
- Evidence in Support of Opposition:
Once the Applicant files the counter-statement, the opponent has to file the evidence in the form of an affidavit within 2 months (extendable by one month) of the receipt of the counter-statement. The Opponent can also write to the Registrar stating that he does not wish to file evidence but wishes to rely on the facts stated in the Notice of Opposition.
- Evidence in Support of Application:
Upon receiving the receipt of the evidence of the Opponent, the Applicant is granted a period of 2 months (extendable by 1 month) for filing Evidence in Support of Application, if any.
If the registrar decides in favor of the applicant, the trademark will be registered, and a registration certificate will be issued. If the registrar decides in favor of the opponent, it will be rejected.
Timeline to file Trademark Opposition
- Notice to the opposition- 4 months from date of Publication
- Counter-Statement- 2 months from the date of receipt of the notice.
- Evidence in Support of opposition/ application – 2 months (1-month extended period)
- Hearing: 14 days from the date of receipt of notice of hearing, parties have to appear.