Trademark Opposition

Any person can oppose the trademark once it is published in the trademark journal. The opposition must be raised within four months of the publication of the trademark in the trademark journal. The opposition can be raised by filing a notice of opposition in the trademark registry along with prescribed fees.

Grounds for trademark opposition

The trademark can be opposed on the following grounds:

  1. if it is similar to another trademark which is already registered
  2. If it is descriptive in nature
  3. If it does not have any distinctive character
  4. if the application was registered in bad faith
  5. if the mark is contrary to law or prevented by law
  6. if it contains anything which is likely to hurt religious sentiments of particular community
  7. if it is likely to confuse or deceive the public
  8. if it is customary in current language
  9. if it is scandalous, obscene or immoral
  10. if the mark is a surname

Procedure for trademark opposition

The procedure for trademark opposition is as follows:

  1. The person who wants to oppose the trademark should file a notice of opposition in Form TM-O along with prescribed fees to the trademark registry within 4 months of the publication. Any person can file the opposition based on the above-mentioned grounds.
  2. After filing of notice of opposition to the trademark registry, the trademark registry will serve the copy of the notice to the applicant of the trademark within 3 months of receiving the notice of opposition.
  3. After this the applicant will be required to file a counter-statement within 2 months of receiving the notice of opposition. If the applicant fails to file a counter statement, then the mark will be considered as abandoned and the registry will not register that mark.
  4. After this the opponent is required to file evidence in support of his notice of opposition within 2 months period to registry and applicant both. Upon receiving the evidence, the applicant is also required to file his/her evidence in support of his application within 2 months period.
  5. After this the opponent can file further evidence within 1 month period if he wishes to do so.
  6. After this the registry will set a date for hearing in which it will decide on the basis of evidence provided and after hearing both the parties, whether to register the mark or reject it. If either of the parties is not present at the hearing the registry will decide the case in favor of the party that is present.

If the registry decides in favor of the opponent, then the application of the applicant will be rejected and if the registry decides in the favor of applicant, then the mark will be registered.

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.

 

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