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Trademark Opposition

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DOCUMENTS REQUIRED

The specific documents required for trademark opposition may vary based on the case and evidence to be presented. Common documents that may be required include

  • Signed evidence supporting the opposition
  • Sales invoices or proof of existing use of a similar mark
  • Copies of relevant advertisements
  • Images of products associated with the mark
  • Government registration certificates, if applicable
  • Screenshots of social media accounts, if relevant
  • Copies of letterheads and visiting cards

Trademark opposition is the stage wherein the Trademark Registry after examination has given acceptance to the Trademark Application filed by the Applicant but any layman or ordinary person who believes that the published mark may cause confusion among the public has filed an opposition. The responsibility of defending the trademark lies with the Trademark Applicant.

Grounds for Trademark Opposition:

The following are some of the grounds on which a trademark opposition can be filed in India:
  1. Similarity or Conflicting: The trademark is similar or conflicting in nature to an earlier or existing registered trademark.
  2. Lack of Distinctive Character: The trademark is devoid of distinctive character, making it difficult to differentiate it from other trademarks.
  3. Descriptive in nature: The trademark is purely descriptive and does not possess inherent distinctiveness.
  4. Malafide Intention: The trademark registration application is made with bad faith, such as with the intention to deceive or take advantage of another’s trademark rights.
  5. Likelihood of Confusion: The trademark is likely to deceive the public or cause confusion amongst public.
  6. Contrary to Law: The trademark is contrary to the law or prohibited by law.
  7. Prohibited by the Emblem and Names Act, 1950: The trademark is prohibited under the Emblem and Names Act, 1950.
  8. Religious Offense: The trademark contains elements likely to hurt religious sentiments or feelings of a particular class or section of people.

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Procedure for Trademark Opposition

Opposition Notice

  • Trademark opposition can be filed within three months of the trademark advertisement in the Trade Marks Journal, with a possible extension of one month, by any person who has a reason to believe that the trademark applied for is same or similar to an existing trademark by filing a trademark opposition notice with the Trademark Registry.

Counter-Statement

  • Upon receiving the opposition notice, the trademark registrar serves a copy to the trademark applicant. The Trademark Applicant shall file a counter statement within two months of receiving the opposition Reply or else the application shall be deemed abandoned.

Hearing

  • After the counter statement and evidence filing stage, the registrar schedules a hearing and sends notices to both parties. The hearing takes place at least one month after the first notice and the opposition notice, counter-statement, and evidence submitted is taken into consideration for arriving at a conclusion. Non-appearance of parties may lead to ruling of the judgement against the absent party.

Appeals

  • The registrar makes a decision based on the evidence submitted by the both the parties. If a party is dissatisfied with the registrar's decision, they can appeal to the Intellectual Property Appellate Board.

Trademark Opposition Outcome

  • If the opposition is successful, the trademark registration will be rejected. If the opposition is unsuccessful, the trademark will be registered.

Advantages of Filing a Reply to Trademark Opposition

Protection of Distinctive Mark

Our Attorneys shall reply to the trademark opposition that shall allow the trademark registrant to assert their rights and protect their distinctive mark from being challenged.

Avoiding Abandonment

a reply to the trademark opposition is not filed within two months, the trademark application may be considered abandoned, resulting in the loss of the opportunity to obtain trademark registration.

Difference between Trademark Objection and Trademark Opposition

Factors

Trademark Objection

Trademark Opposition

Issued by

Trademark Registry

Third Party

Fees

No

Yes

Reply Timeline

Within 1 month of the report

Within 4 months of publication

No Reply Effect

Cancellation

Abandoned

Stages

Before Opposition

After Objection

Trademark vs Copyright vs Patent

 

Trademark

Patent

Copyright

What can be protected?

Product, Service, Word, Device, Collective Mark, Numbers, Certification Mark, Packaging, Shape, Colour, Pattern, Sound, Symbol, Slogan, Tag line.

Inventions, Product or Process.

Books, articles, music, photography, sculptures, dances, sound recordings, motion films etc.

Eligibility

Distinctiveness and Uniqueness.

Novel, Unique and Industrial applicability.

Unique and Original work

Validity

10 years

20 years

Author’s lifetime + 60 years.

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