Trademark Opposition

Overview

Ever wondered as to how your Trademark Registration Process after Showing as Accepted & Advertised got changed to Opposed or in general; it became a part of Trademark Opposition? Does the status of TM Application as Opposed sound scary and you lost the hope of getting your Trademark Registration Certificate?

TRADEMARK STATUS AS “OPPOSED”

If you have filed a TM Application and it is currently showing as Accepted & Advertised by the Trademark Registry, there is still a probability that your Trademark Registration can be challenged by the third party/ public with Trademark Opposition. They can file a TM Opposition against your Trademark Registration by filing TM-O.

At this juncture of having TM-O, it becomes very sensitive to file Reply as Counter Statement against TM-O to the Trademark Department. By filing Counter Statement, you are supposed to prove that how TM-O has been filed in a bad taste and it is null and void in the Trademark Law. Having the right Trademark Agents/ TM Attorneys can help you with your trademark opposition in a hassle-free manner.

In another situation;

If you are an owner of Registered Trademark and you find out that there is another application which has been accepted and advertised by the Trademark Registry, but the wordmark/ logo filed by the applicant is similar to your existing brand under Section 11 and it can cause confusion in the eyes of public. In such a case, you have the legal right to file an application under TM-O to challenge the registration of the filed trademark.

DIFFERENCE BETWEEN TRADEMARK OBJECTION AND OPPOSITION

Trademark Objection and Trademark Opposition are the two most common challenges to any trademark application.

Trademark Objection: Your application may be Abandoned if you do not file the reply to the Examination Report or do not attend the Trademark Hearing as the case may be. If you have filed the REPLY TO EXAMINTION REPORT or/ and, also attended the Trademark Hearing but in all sense, your contention could not satisfy the Trademark Registry, or it was unsustainable in the case of Trademark Objection, the TM Application is marked as Refused.
Trademark Opposition: This is a situation after TM Application getting Accepted & Advertised / Advertised before Accepted. We strongly advise you to seek the assistance of a trademark agent/ attorney to seek the expert consultancy with strong drafting skills, knowledge of Trademark case laws, and the ability to draft a strong counter statements/ trademark opposition (as the case may be) in response or for trademark oppositions raised by parties claiming to be aggrieved by the trademark registration. This can result in TM Withdrawal/ TM Abandoned/ TM Refused on the merit of the case.

Documents Required for Trademark Opposition

The following are some required documents to file an Opposition/ Counter Statement:

Applicant's information, including full name, full address, nationality, qualification, and so on. Body corporates and other categories must provide a Registration Certificate.
Power of Attorney: Submitting a Power of Attorney authorises the attorney to file the Opposition/ Counter Statement on your behalf.
Submit an Affidavit with basic information about the Trademark, user data, and evidence of use;
Detailed information about the mark against which the Trademark Opposition/ Counter Statement is to be filed in the name and basic grounds for filing the Opposition.
Any other documents which are important depending on the case to case basis.

Legal Procedures of Trademark Opposition

The Trademark Opposition procedure includes the following stages:

Step 1: Any person who is dissatisfied with the concerned trademark registration may file a notice of trademark opposition online within four months of the date of advertisement.

Step 2: The Applicant may then file a counter statement within two months of receiving the notice of opposition.

Step 3: Attach certain supporting evidence, if available, to the Counter-Statement. The counter statement must be filed within two months (extendable by one month) via Affidavit.

Step 4: The opponent includes evidence in his arguments; however, he has the option of writing to the Registrar and stating that he/she does not want to file evidence and that facts are all he has.

Step 5: On request, the Opponent may be granted one month (extendable by one month) to file evidence in response to the Applicant's evidence.

Step 6: The Registrar will conduct the hearing based on the notice of opposition, counter-statement, and evidence filed.

Step 7: After receiving the notice of hearing, the parties must notify the Registrar of their intention to appear in the matter within 14 days.

Step 8: Finally, after both parties have an opportunity to be heard, the Registrar decides the case on its merits.

Step 9: If the matter is decided in favour of the applicant, the trademark will be registered, and a registration certificate will be issued. If the registrar rules in favour of the opponent, the trademark application will be rejected as a result of the trademark opposition.

Features & Benefits of Trademark Opposition

The public's popularity, innovation and demand are important factors in the creation of a brand. It is critical for the approval of a Trademark to consult the general public before registering an applied Trademark via TM Opposition.
The owners of registered trademarks have the right to prevent any other similar or identical Trademark from infringing or diluting the reputation of their already registered Trademark in the future by TM Opposition.
When there is a similar Trademark in the market, the owner can also prevent any possible confusion in the minds of the public within 4 months of publishing the same in the trademark journal in the form of TM-O with TM Opposition.
Maintaining and creating a brand is a big responsibility that requires a lot of money. As a result, before registering a brand, the application must go through several checks and scrutiny. One such opportunity/ threat is TM Opposition.
The TM Registration enables a brand to demonstrate its market validity and distinctiveness. As a result, Trademark Opposition is an important and critical stage in the trademark registration process. One of the most effective ways to secure and protect your trademark is to file an opposition.
The Trademark Opposition should be filed within the prescribed time frame; otherwise, the right to file for Opposition will expire. The limitation of time plays an important role in awarding the remedy to the person who has been aggrieved. The process of filing for Trademark Opposition is time-consuming and lengthy.

Compliance Calendar LLP has extensive experience in filing strong trademark counter-statements as well as filing TM-O on your behalf. Our trademark agents/ attorneys have set a standard in representing trademark counter-statements/ filing TM-O and help how to avoid trademark opposition or file tm opposition to safeguard your own brand.

The Most Important Notes for TM Opposition

Note 1: If the Applicant does not file the Counter Statement within two months, the Trademark application is deemed Abandoned.

Note 2: Upon receipt of the Opponent's evidence, the Applicant is given 2 months (extendable by 1 month) to file any Evidence in Support of Application.

Note 3: Trademark opposition is a type of remedy available to registered proprietors/previous users of a trademark. However, all registered proprietors/previous users must keep an eye out for filing trademark opposition.

Note 4: Keep an eye on trademarks even if you are an owner of a registered brand/ previous users. Also, do not get complacent if your TM Application has been Accepted & Advertised and 4 months have not passed which is the period for filing a TM Opposition.

Note 5: If your rights are infringed upon causing a situation of Trademark Infringement, take appropriate action at the appropriate time and Trademark Opposition could be the best remedy at the initial stage of Trademark Registration itself.

Frequently Asked Questions [FAQs]

How do you respond to a Trademark status “Opposition”?

When a trademark is opposed, one must file a trademark opposition reply with counter statements and evidence supporting the trademark's authenticity.

Can a trademark be challenged after it has been Registered?

It is strongly advised that an “Opposition” to be filed after a trademark is advertised in the journal and not after the Trademark is already registered.

How long does it take to file a Trademark Opposition?

The total time to file reply to TM-O is 4 Months. It is important that as an applicant, you should start the preparation of Counter Statement as early as possible. Also, the more time you take, more delay it will cause in the TM Registration Procedure. The entire trademark opposition procedure depends on the case-to-case basis.

Who can Oppose a Trademark Registration?

According to Section 21 of the Trademark Act, 'any person' can oppose a trademark, irrespective of their commercial or personal interest in the matter. A trademark can be countered by a customer, member of the public or competitor, or any other person. Further, on expiry of the four months deadline, no notice of opposition can be filed and the Trademark proceeds to registration

What is the situation where TM Opposition comes into picture?

Following the submission of the trademark registration application, the trademark Examination process begins, and if your application is found to be suitable for registration, it is published in the Trademarks Journal. The goal of such publication or advertisement is to make the work known to the public and allow any third party to file a trademark opposition against it. Only if he or she is dissatisfied with the process of trademark registration then the third party may file a trademark opposition.

How can Compliance Calendar LLP assist in TM Opposition?

We at Compliance Calendar can assist you with your trademark application status “Opposed” with full fledge services from start to end. When a trademark registration application is filed in India, the registrar publishes it in the trademark journal, and a third party has four months from the date of publication or advertisement to file an opposition to the trademark application. When an Opposition is filed against your trademark, the status of your online trademark registration will change to "Opposed". For any support, reach out to us at info@ccoffice.in or connect at 9988424211.

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