TRADEMARK OPPOSITION

A Trademark Opposition is a legal action before the trademark Registrar in which one party attempts to prohibit another from registering a trademark. The trademark law in India is based on common law standards. To ensure the authenticity of the marks registered in the registry and to defend the creator’s interests from infringement, Indian trademark law was established and provided with sufficient checks and protections.

Who is qualified to file a trademark opposition?

Any natural or legal person, such as organizations, partnership firms, or individuals, may file a notice of opposition under Section 21 of the Trademarks Act, 1999. An Indian or international client, a member of the public, a competitor, or anyone else may file a trademark opposition. In reality, if two or more people have the same complaints about a trademark, they may be joined together. 

In most cases, the following individuals file a trademark opposition:

  • Holders of an earlier trademark application or registration for a similar Trademark for identical products.
  • A person who has previously used the same or a similar trademark as the customer but has not yet registered it.

Filing an Opposition’s Basic Requirements

A trademark will be challenged after it has been published in the Trademarks Journal for at least four months from the day it was first marketed or re-advertised. According to the Trade Marks Act of 1999, anybody may object to the registration of a mark that has been published in the Journal by filing a notice of opposition with the Registry in a specified manner and with the required fees. Any party may file a notice of opposition against a trademark under the Act, and the Opponent does not need to have an application or registry in India to do so.

GROUNDS FOR OPPOSITION:

  • As described in Section 9 of the Act, absolute grounds of denial include the trademark not being unique or capable of separating the Applicant’s goods/services from those of others, or the trademark being generic, descriptive, or common to trade.
  • The trademark is phonetically, physically, conceptually, misleading, and deceptively similar/identical to the Opponent’s trademark and/or in respect of similar goods/services, as given under Section 11 of the Act.
  • Based on the specifics of the case, other relevant grounds include the Opponent’s well-known trademark, copyright of the artistic work, and geographic location.

Opposition Procedure

The following are the procedures involved in a trademark opposition:

  • The trademark name must be opposed against once the equivalent trademark has been published in the Trademarks Journal inside an endorsed time of four months from the date on which it was publicized.
  • The Registrar is required to serve a copy of the notice of opposition to the Applicant of the trademark within three months of receiving it.
  • The Applicant must file a counter statement specifying the facts and submissions in favor of their application under opposition within two months of obtaining the notice of opposition.
  • The Trade Mark Rules, 2017, provide a provision for facilitating the review by submitting a counter statement in support of the application prior to the service of the notice of opposition.
  • The Applicant’s trademark would be deemed worthless for non-prosecution if the Applicant fails to file a counter statement within the time limit.
  • The opposition moves to the evidence stage if the Applicant files a counter statement.
  • Normally, the Registrar would serve a copy of the counter-statement on the Opponent within two months of receiving it.
  • The Opponent must file an affidavit by means of evidence in favour of the opposition with the Trade Marks Registry and serve a copy on the Applicant within two months of obtaining the counter statement.
  • The Applicant must file its affidavit by way of evidence in support of the application with the Trade Marks Registry and serve a copy on the Opponent within two months of obtaining the affidavit by way of evidence in support of the opposition.
  • The opposition/application may be considered rejected for non-prosecution if the affidavit in favor of the opposition/application is not submitted.
  • If all of the pleadings are complete, the lawsuit will be scheduled for a trial. The Registrar will determine whether or not the trademark should be approved for registration after hearing all parties and considering the facts.
  • An aggrieved party will appeal the Registrar’s decision in the opposition proceedings by filing a review with the Registrar or an appeal in the High Court.

CONCLUSION 

As a result, trademark opposition is a crucial step in the registration process. It is one of the most effective ways to safeguard your name and defend your trademark. The time limit plays an important part in determining the solution. Prior users/registered proprietors must be careful in protecting their marks by conducting an appropriate proceeding at the appropriate time. 

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