Startup
Start Your Business
Private Limited Registration
Public Company Registration
OPC Pvt Ltd Registration
LLP Firm Registration
Section 8 Company Registration
Nidhi Company Registration
Insurance Company Registration
NBFC Company Registration
Producer Company Registration
Foreign Subsidiary Registration
Foreign Branch Office
Foreign Liaison Office
Foreign Project Office
Overseas Company Registration
Proprietorship Firm Registration
Partnership Firm Registration
Grow Your Business
GST Registration
MSME Registration(UDYAM)
Shop & Establishment Registration
Startup India Registration
ESI/PF Registration
IEC Code (Import Export)
Startup Consultation
Appoint Virtual CFO
Angel Funding/ VCs
Virtual Office Service
Due Diligence of Company
Business Development
Protect Your Business
Trademark Registration
Trademark Objection
Trademark Hearing
Trademark Opposition
Trademark Infringement
Trademark Renewal
Trademark Assignment
Trademark Withdrawal
Trademark Monitoring
Logo Design Service
Copyright Registration
Patent Registration
Exit Your Business
Close Company
Fast Track
Close LLP
Close Firm
GST Cancellation
Compliances
Change Services
Change Company Name
Change LLP Name
Change Company Object
Change LLP Object
Increase Authorised Capital
Increase Paid-up Capital
Increase LLP Capital
Transfer of Shares
Alteration in MoA & AoA
Resignation of Auditor
Appointment of Director
Resignation of Director
Change in Designation of Director
Shifting Registered Office of Company
Shifting Registered Office of LLP
Dormant Status of Company
Mandatory Compliances
Appoinment of Auditor
Annual Filings of Company
Annual Filings of LLP
Annual DIN/DPIN KYC
Annual Return of Deposits
Half Yearly MSME Return
Statutory Registers & Minutes
XBRL Filing of Companies
eStamping of Share Certificates
Dematerialisation of Shares
RBI FEMA Compliance
GST Returns Filing
ESI-EPF Returns Filing
TDS Returns Filing
Change in Structure
Proprietorship to OPC
OPC to Private Limited
Private Limited to OPC
LLP to Private Limited
Private Limited to LLP
Partnership Firm to LLP
Private Limited to Public Company
Public Company to Private Limited
Trust/Society to Section 8 Company
Existing Company to Section 8
Existing Section 8 to Company
Services
Accounting & Book Keeping
GST Compliance
Valuation Services
Corporate Litigation
Company Law Advisory
Services For Banks
Drafting & Vetting Services
Business Setup Advisory
Startups Funding
Business Loans
Get in Touch
Govt Liaisoning
Retainership Services
NBFC
NBFC Company Registration
NBFC Micro-Finance Registration
NBFC P2P Lending Registration
NBFC Core Investment Company
NBFC ROC Compliance
NBFC RBI Compliance
NBFC License Restoration
NBFC Business Plan
NBFC Acquisition
NBFC Consultancy
NBFC Compliance Calendar
NBFC Independent Director
ISO
ISO 9001:2015
Most Demanded
ISO 14001:2015
ISO 13485:2016
OHSAS 18001:2007
HACCP Certification
CE Marking
GMP Certification
CMMI Level 3 Certification
ISO 22000:2005
ISO 27001:2013
FSSAI
FSSAI Registration
FSSAI State License
FSSAI Central License
FSSAI Registration Renewal
FSSAI License Renewal
FSSAI Returns Filing
FSSAI Compliances
FSSAI Consultancy
ITR
Salaried Person
TDS Refund
Firms/LLPs
Companies
NGOs
Income Tax Notice
Income Tax Planning
Income Tax Litigation
Income Tax Computation
Charity
Section 8 Company
Recommended
Trust Registration
Society Registration
80G & 12A Registration
FCRA Registration
NITI Ayog Registration
CSR-1 Registration
CSR 2 Report
CSR Services
NGO Consultancy
NGO Handholding
Govt Grants Support
Partnership
Angel Investors
Venture Capitalists
Co-Working Spaces
Banks and NBFCs
Incubation Centres
Government Wings
Institutional Bodies
Software Companies
CA/CS/CMA/Lawyers
Press & Media Houses
Overseas Ventures
Other Startup Enablers
Contact Us
Home
Trademarks
How to file Counter Statement for Trademark Opposition?
How to file Counter Statement for Trademark Opposition?
Volume
1
Rate
1
Pitch
1
How to file Counter Statement for Trademark Opposition?. Have you ever thought why most people get worried when the trademark application stage shows “OPPOSED” and you have to file a “COUNTER STATEMENT” reply for the opposition raised in the notice. In this article, we have covered a detailed overview about the Counter Statement for Trademark Opposition which can give you a clear understanding why it is one of the most crucial steps in Trademark Application and how you can file a proper structured Counter Statement draft in your favour. What is Notice of Opposition? After a trademark application has been accepted by an examiner, it is published in the trademark journal for a specified period of time, which is usually around four months. During this period, any person who believes that they may be adversely affected by the registration of the trademark can file a Notice of Opposition with the relevant trademark office. The opponent first sends the notice to the TM registry for review, and if all formalities are met, the Registry serves the notice on the opposing party, i.e. the Applicant. Who can oppose a Trademark Application in India? According to Section 21 of the Trademark Act, 'any individual person' can oppose a trademark, irrespective of his commercial or personal interest in the matter. This includes companies, individuals, trusts and partnership firms. Thus, any aggrieved third party can raise opposition to trademark registration. The person filing the Notice of Opposition must have a legitimate interest in the trademark and must provide valid grounds for the opposition. The grounds for opposition may include prior use, prior registration, likelihood of confusion, or other legal grounds that would prevent the registration of the trademark. It's important to note that the opposition must be filed within the specified period and must meet all the formal requirements, including payment of the requisite fees. Additionally, the person filing the opposition must provide sufficient evidence to support their opposition, including evidence of their prior use or registration of a similar trademark, if applicable. Counterstatement for Notice of Trademark Opposition- A counter statement is a response filed by the applicant of a trademark after they have received a Notice of Opposition from an opponent. The counter statement is a formal document that responds to the allegations made by the opponent in their Notice of Opposition. The applicant must file their counterstatement to the notice of opposition raised against them to the Registrar in the Form TM-O within two months of receiving the copy of the notice of opposition stating their facts. The Registrar will serve the copy of the counterstatement to the opposing party within two months of receiving the counterstatement. In the counter statement, the applicant may admit or deny the allegations made by the opponent in their Notice of Opposition. The applicant may also provide evidence and arguments to support their trademark application and to refute the grounds of opposition raised by the opponent. The counter statement is an important step in the opposition process, as it allows the applicant to defend their trademark application and to present their case to the trademark office. It's important to note that failure to file a counter statement within the specified period may result in the abandonment of the trademark application. Grounds for Trademark Opposition- In India, a trademark can be opposed on various grounds. Some of the common grounds for opposition are: Prior Use: The opponent can claim that they have been using a similar or identical trademark in India for their goods or services before the application was filed. This ground requires the opponent to establish that they have prior rights over the trademark. Similarity or Likelihood of Confusion: The opponent can argue that the trademark applied for is likely to cause confusion or deception in the minds of the consumers with their existing trademark or other prior rights. This ground requires the opponent to show that there is a likelihood of confusion or deception, which may result in passing off of the goods or services of the opponent. Descriptiveness: The opponent can argue that the trademark applied for is descriptive in nature and does not possess any distinctiveness or secondary meaning in the eyes of the consumers. This ground requires the opponent to show that the trademark is merely descriptive and lacks any distinctiveness. Deceptive or Scandalous Matter: The opponent can claim that the trademark applied for is deceptive or scandalous in nature and is against public policy or morality. Prohibited Marks: The opponent can argue that the trademark applied for is prohibited under the Trademarks Act, 1999, such as trademarks that are likely to hurt religious sentiments, are obscene or are likely to cause harm to public health. Points To Be Noted While Drafting the Counter Statement- When drafting a counter statement for a trademark opposition, it's important to keep the following points in mind: Address each ground of opposition: Your counter statement should address each ground of opposition that has been raised against your trademark application. You should provide a detailed response that refutes the claims made in the opposition. Provide evidence: Your counter statement should include evidence that supports your trademark application. This could include market research, sales figures, customer feedback, and other relevant information that demonstrates the strength of your trademark. Use legal language: Your counter statement should be written in legal language that is clear and concise. Avoid using jargon or technical terms that may be difficult for the trademark office to understand. Be factual: Ensure that all information included in your counter statement is factual and accurate. Avoid making unsubstantiated claims or misrepresenting information. Follow the rules: Your counter statement should follow the rules and guidelines of the trademark office. Ensure that it is formatted correctly and that all necessary information is included. Seek legal advice: If you are unsure about how to draft your counter statement or need legal advice, it's recommended to seek the help of a trademark attorney. They can provide guidance and ensure that your counter statement is well-written and effective in addressing the opposition. Difference between Reply for Objection and Counter Statement for Opposition? A Reply for Objection and a Counter Statement for Opposition are two legal documents that are used in different stages of a trademark application process. A Reply for Objection is a response to an objection raised by the trademark examiner during the examination process. The trademark examiner may raise an objection if they believe that the trademark application does not meet certain requirements or is too similar to an existing trademark. The Reply for Objection is a written response that addresses the examiner's objections and provides arguments and evidence to support the application. The goal of the Reply for Objection is to overcome the objections and convince the examiner to approve the application. A Counter Statement for Opposition is a response to an opposition filed by a third party who believes that the trademark application should not be granted. If someone files an opposition, they are essentially challenging the trademark application and arguing that it should not be granted for various reasons, such as the potential for confusion with their own trademark. The Counter Statement for Opposition is a written response that addresses the opponent's arguments and provides arguments and evidence to support the application. The goal of the Counter Statement for Opposition is to convince the Trademark Trial and Appeal Board that the trademark application should be granted despite the opposition. In summary, the Reply for Objection is a response to an objection raised by the examiner, while the Counter Statement for Opposition is a response to an opposition filed by a third party. Both documents are important for protecting and defending a trademark application, and they require careful consideration and attention to detail. Procedure for Counter Statement of Trademark Opposition The procedure for filing a Counter Statement for Opposition in response to a trademark opposition is a legal process that can be complex, but here are the general steps involved: Receive notice of opposition: Once a third party files an opposition to your trademark application, you will receive a Notice of Opposition from the Registrar. This document will provide information on the grounds for opposition, the opposing party's trademark registration or application, and the deadline for filing your Counter Statement. Prepare the Counter Statement: The Counter Statement is a formal response to the opposition, and it must be filed within 30 days of the Notice of Opposition. The Counter Statement should address the grounds for opposition raised by the opposing party and provide evidence and arguments to support your trademark application. File the Counter Statement: You must file the Counter Statement within the deadline specified in the Notice of Opposition. The Counter Statement must include the trademark application number, the name and address of the opposing party, and a statement that you are the applicant for the trademark. Wait for the Opposing Party's Reply: After you file the Counter Statement, the opposing party will have 30 days to file a reply to your response. This reply will address your arguments and evidence and may include additional evidence or arguments in support of the opposition. Await decision: Once the reply period has ended, the case will be assigned to a Trademark Registrar. Also, once the counter notice is filed, the evidence supporting the counter statement, if any are filed and based on the replies and evidence it will be notified by the registry to appear in the hearing. After the hearing, the registrar will decide whether the trademark is to be accepted or not, will also review the evidence and arguments from both sides and make a decision on whether to grant or deny the trademark application. Conclusion In conclusion, filing a Counter Statement for Trademark Opposition is a critical step in defending your trademark application against an opposition raised by a third party. It is important to understand the legal process, gather strong evidence, and provide compelling arguments in support of your trademark application. Working with an experienced trademark attorney can help ensure that you are meeting all the filing deadlines and requirements, and that your Counter Statement is well-prepared and persuasive. With their guidance and expertise, you can navigate any challenges that arise during the opposition process and increase your chances of securing your trademark registration. By following the steps outlined in this article and seeking professional legal assistance, you can approach the Counter Statement for Trademark Opposition process with confidence and work towards achieving a positive outcome for your trademark application.
Share this article:
Search more articles:
You may also like
The Ultimate Guide: How to Register Your Brand Name in India
How to Reply Trademark Objection in Examination Report under Section 9 and 11
Trademark Opposition Process in India
Trademark Infringement: Meaning, Types, Examples and How to Avoid TM Infringement
Trademark Renewal Process in India
Trademark Assignment Process: Learn How to Transfer Trademark Ownership
Stages of Trademark Registration Status - The Complete Manual
Trademark Status- Send to Vienna Codification
Trademark Status- Formalities Chk Pass
Trademark Status- Formalities Chk Failed
Trademark Application Status- Marked For Exam
Trademark Status- Examination Report Issued
Trademark Status- Objected
Trademark Status- Ready for Show Cause Hearing
Trademark Status- Advertised Before Accepted
Trademark Status- Accepted
Trademark Status- Accepted and Advertised
Trademark Status- Refused
Trademark Status- Abandoned
Trademark Status- Withdrawn
Trademark Status- Opposed
Trademark Status- Registered
Trademark Status- Removed
Absolute Grounds of 'Distinctive' and 'Distinguish' Character under Section 9(1) (a) of the Trademarks Act, 1999
Analysis of Trademark Genericide: Meaning, Effects and ways to Protect
An analysis on the proviso of Section 9 (1) (b) of the Trademark Act, 1999
What is Assignment and Transmission in Trademark?
How to protect your brand name by filing a Trademark Application
How Startups can protect their brand / Logo in India and Government supports
List of New Trademark Forms in India as per the Trademark Rules, 2017
What is Class 99 of Trademark Application- Is it a good or bad decision?
What are well known Trademarks and How to obtain it?
What is the difference between TM and ®
Protecting Your Brand: A Step-by-Step Guide to Trademark Registration
Trademark Law: Protecting your brand identity
Trademark Registration Online: Protect your Business IP
Reply to Trademark Objection on Relative Grounds of Refusal: Section 11 of Trademarks Act, 1999
Exploring Non-Conventional Trademarks Under the Trade Marks Act, 1999
YAHOO INC VS. AKASH ARORA AND ANR - Does Domain Name Constitute Trademark Infringement?
Concept and Protection of Trade Dress in Trade Mark
IPR for Social Media Influencers- Here's all you need to know
Damages for Trademark Violation - Puma Se vs. Ashok Kumar | Delhi HC
Delhi High Court on (Non) Functioning of the Trademark Registry Website/Portal
Safeguarding Food Trademarks: Domino’s vs. Dominick Pizza ruling on Deceptive Similarity
Have you claimed Depreciation on your Brand Name? Here’s a Landmark Ruling to watch out
The Case Against Meesho: Why E-Commerce Portals Must Ensure Complete Disclosure of Sellers Details
Special Drive Initiative to Expedite Pending Trademark Applications
Difference Between Trademark and Service Mark
Importance of Using Trademarks to Maintain Applicability in Indian Law
International Non-Proprietary Names (INN) and Trademark Laws in India
Process of Rectification of Trademark in India
Role of Trademark Attorneys in Trademark Registration
Why is Trademark Registration for Startups and Small Businesses Necessary?
A Battle Between the Coca-Cola Company v. Bisleri International Pvt. Ltd. For Trademark Infringement
Delhi High Court Rules in Favor of Google in Trademark Infringement Case
No Monopoly Can Be Claimed for Words of Common English Usage
Common Mistakes to Avoid When Choosing a Trademark for Your Brand
Brewed Trademark Infringement Case of Starbucks Vs Sardarbuksh
Exploring the Concept of 'Deceptive Similarity' in Trademarks Law
Why Filing of Evidence Before the Registrar of Trademarks is Crucial?
Rise of Domain Names as Trademarks in the Digital World
Concept of Passing Off in Indian Trade Mark Law
Evolution of Trademark Laws in India
Important of Power of Attorney (POA) in Trademark Filing
Trademark Issues in Co-branding and Collaborations
Trademark Enforcement Strategies for Online Marketplaces and Platforms
Trademarking Financial Services in the Fintech Industry
Interplay of Trademarks and Artificial Intelligence in the Modern Digitalized Era
Who can register a trademark in India?
Trademark Status- Protection Granted
Trademark Case Law: Sterling Agro Industries Limited v. ASR Trading Company
Registration of Color Trademark in India Under Trademarks Act, 1999
Trademarking Sustainable Tourism
Trademark Protection for NGOs / Non-Profit Organizations in India
Role of the USPTO in Trademark Registration
How to know the Trademark Status for Trademark Registration in India
Can a person trademark their own name in India?
Trademark Strategies for Startups - A Complete Guide
Supporting Documents Required for Attending Trademark Hearing in India
How to fight Trademark Infringement bonafide if your mark is different?
When to file for Trademark Abandoned Status as an Applicant?
Trademark Registration Online: The Complete Process and Cost
Extent of exclusivity granted over the shape of a product by trademark registration in India
Process of Trademark Withdrawal in India
Should Trademark Logo (Device) be filed in colour or black and white (grey)?
Bearing the Burden of Common Use in Trademark Ownership
Start Your Business
Private Limited Registration
Public Company Registration
OPC Pvt Ltd Registration
LLP Firm Registration
Section 8 Company Registration
Nidhi Company Registration
Insurance Company Registration
NBFC Company Registration
Producer Company Registration
Foreign Subsidiary Registration
Foreign Branch Office
Foreign Liaison Office
Foreign Project Office
Overseas Company Registration
Proprietorship Firm Registration
Partnership Firm Registration
Grow Your Business
GST Registration
MSME Registration(UDYAM)
Shop & Establishment Registration
Startup India Registration
ESI/PF Registration
IEC Code (Import Export)
Startup Consultation
Appoint Virtual CFO
Angel Funding/ VCs
Virtual Office Service
Due Diligence of Company
Business Development
Protect Your Business
Trademark Registration
Trademark Objection
Trademark Hearing
Trademark Opposition
Trademark Infringement
Trademark Renewal
Trademark Assignment
Trademark Withdrawal
Trademark Monitoring
Logo Design Service
Copyright Registration
Patent Registration
Exit Your Business
Close Company
Fast Track
Close LLP
Close Firm
GST Cancellation
Change Services
Change Company Name
Change LLP Name
Change Company Object
Change LLP Object
Increase Authorised Capital
Increase Paid-up Capital
Increase LLP Capital
Transfer of Shares
Alteration in MoA & AoA
Resignation of Auditor
Appointment of Director
Resignation of Director
Change in Designation of Director
Shifting Registered Office of Company
Shifting Registered Office of LLP
Dormant Status of Company
Mandatory Compliances
Appoinment of Auditor
Annual Filings of Company
Annual Filings of LLP
Annual DIN/DPIN KYC
Annual Return of Deposits
Half Yearly MSME Return
Statutory Registers & Minutes
XBRL Filing of Companies
eStamping of Share Certificates
Dematerialisation of Shares
RBI FEMA Compliance
GST Returns Filing
ESI-EPF Returns Filing
TDS Returns Filing
Change in Structure
Proprietorship to OPC
OPC to Private Limited
Private Limited to OPC
LLP to Private Limited
Private Limited to LLP
Partnership Firm to LLP
Private Limited to Public Company
Public Company to Private Limited
Trust/Society to Section 8 Company
Existing Company to Section 8
Existing Section 8 to Company
Services
Accounting & Book Keeping
GST Compliance
Valuation Services
Corporate Litigation
Company Law Advisory
Services For Banks
Drafting & Vetting Services
Startups Funding
Business Loans
Get in Touch
NBFC
NBFC Company Registration
NBFC Micro-Finance Registration
NBFC P2P Lending Registration
NBFC Core Investment Company
NBFC ROC Compliance
NBFC RBI Compliance
NBFC License Restoration
NBFC Business Plan
NBFC Acquisition
NBFC Consultancy
NBFC Compliance Calendar
NBFC Independent Director
ISO
ISO 9001:2015
ISO 14001:2015
ISO 13485:2016
OHSAS 18001:2007
HACCP Certification
CE Marking
GMP Certification
CMMI Level 3 Certification
ISO 22000:2005
ISO 27001:2013
FSSAI
FSSAI Registration
FSSAI State License
FSSAI Central License
FSSAI Registration Renewal
FSSAI License Renewal
FSSAI Returns Filing
FSSAI Compliances
FSSAI Consultancy
ITR
Salaried Person
Firms/LLPs
Companies
NGOs
Income Tax Notice
Income Tax Planning
Income Tax Litigation
Charity
Section 8 Company
Trust Registration
Society Registration
80G & 12A Registration
FCRA Registration
NITI Ayog Registration
CSR-1 Registration
CSR 2 Report
CSR Services
NGO Consultancy
NGO Handholding
Govt Grants Support
Partnership
Angel Investors
Venture Capitalists
Co-Working Spaces
Banks and NBFCs
Incubation Centres
Government Wings
Institutional Bodies
Software Companies
CA/CS/CMA/Lawyers
Press & Media Houses
Overseas Ventures
Other Startup Enablers
Contact Us