Trademark is typically in the form of words, phrases, logos and symbols which are used by the owners to identify or differentiate their goods or services from others. The registration of this trademark is quite protracted which include advertising of the mark in the trademark journal. At this time of advertising, any public or third party can raise opposition against the trademark and thereby can initiate proceedings against the trademark under the Trademark Act, 1999. This opposition can be raised within a time span of four months from the date of advertisement in the trademark journal. The main objective of opposition is to safeguard the rights of the prevailing registered holder from registering an identical or deliberately same trademark. Therefore, Trademark opposition is considered as an intrinsic stage in the process of registration of a trademark. It is a legal right in the hands of the public or third party to assert a particular trademark. As soon as the opposition is levelled against the trademark the status of the trademark will be marked as “opposed”.
The opposition of trademark is dealt with under Section 21 of the Trademark Act 1999, in India. The section depicts that “any person” has a locus standi to raise opposition against the trademark that has been published in the journal. This opposition can be made by any public, third party who may be a purchaser who is likely to use the goods/services, companies, partnership firms or trusts. The opposing person need not be the registered owner of the trademark. The opposition stage in India will come soon after the proposed trademark has been approved by the registrar and got published in the journal. Thereafter both parties need to arrive at a conclusion whether the opposed trademark should be abandoned or registered. After all, there is no restraint in filing an opposition. Anybody who felt that the published trademark is capable to evolve confusion among society, in general, can raise opposition against the published trademark.
The following are the possible grounds under which the opposition of trademark is also made:
When the same mark is published within the journal;
When the mark is non-distinctive;
When the mark has descriptive nature;
When the appliance for the trademark is created not in an exceedingly very guardian spirit but on bad faith;
When the mark is already been established within the business practices or customary within this present language;
When the trademark is probably capable to evolve confusion;
When the trademark is contrary to the law or is prevented by law;
When the trademark is prohibited under the Emblems and Names Act 1950;
A trademark opposition is considered substantially as a conflict for the registration of a trademark. This is due to the reason that the trademark which has been approved by the registrar and got published in the journal has been opposed by the public or third party with the TTAB (Trademark Trial and Appellate Board) to chunk the trademark from being registered. The opposition may be due to the reason of mere similarity, priority or descriptiveness between the respective trademarks. Hence the opposer should justify the opposition to invalidate the trademark or the trademark applicant need to validate the trademark against the opposition raised.
A. Filing of notice of opposition/ Filing a counter-statement:
The Trademark opposition proceeding will commence by the filing of a notice by the public or a third party within a span of four months of time from the date of advertisement or re-advertisement of the proposed trademark in the Trademark journal. This opposition must be on Trademark Form 5 in the prescribed format and should be filed with the concerned applicable fees for the opposition.
The notice for the opposition should contain the following information’s:
The application should contain opposing trademark registration application number, category of goods or services for which trademark registration application was made and the name of the applicant of the specific trademark application;
Details of the party who oppose the trademark including name and address; and
The grounds on which the opposition has been raised.
Thereafter upon receipt of notice of opposition, a counter-statement must be filed by the applicant of the trademark within two-month time period in form TM-O along with the prescribed fee. The counter-statement must be filed with the given period. It means that if the counter is not filed by the applicant within two months of opposition notice the applicant shall be deemed to have abandoned his application. The counter-statement should be framed like a paragraph wise counter to each of the grounds mentioned in the opposition notice. Then finally it will be sent to the registrar for verification and review. If the registrar found that all the requirements are meted out the registrar will serve the counter-statement to the opponent
B. Filing of Evidence:
Filing of evidence is dealt with under Rule 45, 46 and 47 of the Trademark Act 1999.
Rule 45: Evidence in support of Opposition:After receiving the counter-statement from the applicant the opponent must produce evidence to support the opposition within two-month time period in the form of an Affidavit to establish the stand of opposition. On the other hand, if the opponent wishes to reply to the facts stated in the notice of the opposition individually the opponent can choose to waive the filing of such affidavit. The same shall be intimated to the office of the trademark registry and the other party within the prescribed time limit otherwise the opposition will be deemed as abandoned.
Rule 46: Evidence in support of Application:After receiving the evidence under rule 45/asserting the waiver by the opponent, the applicant needs to cite evidence in support of the application. At this juncture, the applicant has also been endowed with the option of waiving from submitting any evidence and left out with the option to rely on the counter-statement alone.
Rule 47: Evidence in Reply:After receiving the evidence under rule 46/ asserting the waiver by the applicant, the opponent for one more time has been endowed with the privilege to render more evidence in supporting the opposition. Rule 47 is specifically designed to attain some sort of conclusion in the opposition proceeding in order to invalidate the evidence given by the applicant and to stretch out their case.
C. Hearing:As soon as the evidence submission stage, a hearing is chosen by the Registry and the parties are intimated about the hearing framed. Here a request for an adjournment for hearing can be made under Form TM-M at least 3 days prior to the date of hearing. The maximum number of adjournments that the parties can apply for is limited to 2 and the duration for the same is restricted to not more than 30 days. At last, the registrar after Audi alter paretm and reviewing the evidence adduced by the parties shall resolve to a conclusion whether the trademark shall be registered or not by bringing the opposition proceeding to the termination. Thereafter the party oppressed by the decision of the registrar shall move before the Intellectual Property Appellate Board for challenging the registrar’s decision.
Form Number TM-O is involved within the cost on notice of opposition/ application for rectification of the register/counter-statement/refusal or invalidation of the trademark under Geographical indication of goods (regulation and protection) act, 1999.
Generally, right from the notice for opposition under section 21(1), 64, 66 or 73 or pertinence for amendment of register dealt in sections 47 to 57, 68, 77 of the Trademark Act 1999 or appliances dealt in rules 99, 103, 135, 140 or an appliance discussed in section 25 of Geographical Indication of goods (Regulation and Protection) Act, 1999 to render a trademark or counter statement invalid related thereto is dealt under the first schedule of Trademark rules 2017. It stipulates the subsequent filing expenses:
Physical Filing: Rs.3000/-
E-Filing : Rs.2700/-
The following is the timeline involved in the trademark opposition process:
Opposition to the trademark published in the journal should be made by the public or third party within four months from the date of publication;
The applicant of the opposed trademark shall file the counter-statement within two months from the date of receipt of the opposition notice;
Evidence supporting the application/opposition shall be made within two months time period (1-Month extended period);
About hearing, 14 days from the date of receipt of notice of hearing, the parties have to appear for adjudicating process.
Compliance Calendar LLP assists in the identification of similar trademarks and differentiates the nature of trademarks. When Compliance Calendar finds that the trademark might create confusion among the public then it will express the future impact of the trademark among the society and will tell that the particular trademark is not valid. It assists the companies, trusts, general public or third party in the trademark opposition process. We at CCL will ensure that the existence of an invalid trademark does not prevail. We will analyze whether all the process of the opposition procedure of trademark has been meted out with due care and caution and will help in preventing the invalid trademark from holding a position in the society. CCL will assist in undergoing the opposition process by stipulating the rules and regulations. CCL will render compliance only to the trademark which are deemed fit and valid for the public in general and the society at large.
Thus, Compliance Calendar LLP not only will render compliance for a valid trademark but also eradicate the existence of trademark which vitiates the true nature by creating confusion and deemed invalid or void ab initio. If you have any questions, feel free to write to us at info@ccoffice.in or WhatsApp/Call at 9988424211