During the process of Registration of Trademark there are two occasions where the provision for refusal of registration of Trademark can be refused. The first is objection and the second is opposition.
Objection is raised by the examiner against registration of the mark whereas the opposition is raised by the third party. Once the examiner reviews the trademark and finds that it qualifies for registration, the trademark gets published in the Journal of the Trademark. According to section 21 of the Trademarks Act, 1999 any person can file the notice of opposition within three months (extendable by one month) from the date of publication of the mark in the official Journal. In section 21 “any person” comprise individual, companies or trust or any person can file the notice of opposition. In Emjas Trust vs. Winston Food Co. (1991) PTC 10 (TMR) it was held that a “trust” per se not represented by any trustee cannot file notice of opposisiton.
The jurisdiction for filing Notice of opposition is same registry where the application for registration of conflicting mark has been filed.
Grounds of Trademark Opposition
The grounds on which a person can initiate the opposition proceeding are as follows:
- That the mark is similar to or identical to the existing trademark.
- That the mark is not distinctive in nature.
- That the application for the trademark has been applied in bad faith.
- That the mark is descriptive in nature.
- That the mark is likely to deceive the public or cause confusion among them.
- That the mark consists of matters that is likely to hurt the religious feeling of any class or section of the society.
- That the mark is prohibited under the Emblems and Names Act, 1950.
In Myrurgia vs Subramayam AIR 1959 Cal 116 Court held that the registrar has power to take into account new ground of opposition which is not relied upon by opponent.
Procedure for Trademark Opposition in India
- Filing of notice of Opposition: Any person within 4 months from the date of advertisement of the Trademark in the Official Journal can file Notice of Opposition. The Notice of opposition shall consist of ground of opposition.
- Filing of Counter Statement: The applicant shall file the Counter- Statement within 2 months from the date of receipt of notice of Opposition. If the counter statement is not filed within stipulated time, then the application for registration of trademark shall be deemed to have been abandoned by the applicant.
- Filing of Evidence in support of Opposition: When the counter statement has been filed then within 2 months from the date of receipt of counter statement the opponent has to file the evidence in support of opposition by way of affidavit. The opponent however has an option to write to controller that he further relies on the facts as depicted in Notice of Opposition.
- Filing evidence in support of Trademark application: Within 2 months (extendable by one month) from the date of receipt of evidence in support of opposition, the applicant shall file evidence in support of application.
- Filing evidence in reply: Moreover, the opponent is given one-month time period so as to reply the evidence received by opponent in respect of application.
- Hearing: After filing all the above documents the Registrar shall call upon the parties for the hearing. Further, after hearing both the parties registrar is at discretion to further allow the registration of the mark or reject the same.
In the event of your Trademark application is opposed the best option is to seek assistance from an experienced and knowledgeable Attorney. After careful review of the application, perform necessary research into the individual or business that filed the opposition. Sometimes its simply isn’t worth the cost and aggravation of defending a Trademark opposition especially if you haven’t invested a lot of time and money into developing and implementing your Trademark. The good news is that vast majority of Trademark opposition is settled early on in the opposition proceeding.
But sometimes you get into a really long fight that’s almost like litigation. If the opposition succeeds in proving that your Trademark should not be registered and you can’t successfully overcome those objections, then your Trademark will be deemed abandoned There is another option which is a coexistence agreement or consent agreement that either side may file. But it depends if the opposition is open to a settlement and willing to explore potential compromises including amendments to the identification of goods and services, limitations of usage of marks and limiting to certain product line only or minor changes to your mark etc.
Role of trademark attorney in opposing trademark application
Hiring an experienced agent or attorney for the opposing of trademark can be beneficial in several manners:
- An agent can preliminarily advice the client in respect of on what ground to oppose the mark.
- An agent as per the requirement of the client can strategize for the opposition process.
- An agent/attorney can file the opposition before the trademark registry.
- An agent/ attorney can further suggest the client at the time of opposition process.
- An attorney can represent the client in court during the opposition proceedings.