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Procedure for Trademark Opposition in India

While many Brand Owners believe that Registration of their Brand names completes their duties towards Brand Protection, they certainly need to consider the journey for Trademark Oppositions. Trademark opposition is one of the most substantial remedies available with any brand owner for protecting his or her trade mark. This is one of the earliest opportunity given to the public as a whole, including but not limited to an affected party whose trade mark rights may be hindered/ diluted, by a dishonest applicant who has made an attempt for registration of a similar or deceptively similar trade mark and sought statutory protection by deceiving the original prior registered/ unregistered trade mark owner as well as the office of the Registrar of Trade Marks.

A trademark is always published in the trademark journal before final acceptance. If no opposition to the published application is received within 4 months of the publication or if received, the same is disposed in favour of the applicant and the application is moved for registration.

The following is a flow chart for functions relating to Post Examination disposal of applications filed for registration of trademarks:

Trademark Opposition Procedure Chart

Trademark Opposition

After advertisement of a trade mark in the Trade Marks Journal, the law provides a period of 4 months within which the registration of the trade mark may be opposed by any person[1]. This opposition proceeding can be filed only before the Registrar and cannot be taken direct either to the Court or the Appellate Board (IPAB). If the opposition is successful, the registration of the trade mark will be refused. If it fails, the mark will be registered.

Who may oppose the Application?

“Any person” may give a notice of opposition to the registration of a trade mark.

The person filing the opposition need not to have any commercial or personal interest in the matter or a prior registered trade mark owner. The question of bona fides of the opponent does not arise[2].

Grounds of opposition

The law doesn’t specify the grounds of opposition. However, an opposition is ordinarily based on any one or more of –

  1. absolute grounds[3];
  2. relative grounds[4];
  3. any prohibitions[5];
  4. absence of consent in writing[6];
  5. Besides, the opponent may also raise objection with regard to the proprietorship of the trade mark opposed[7].

Limitation Period for filing Notice of opposition

Within four months from the date of advertisement or re- advertisement of an application for registration in the Trademarks Journal.

Prescribed Form & Fees

Opposition required to be fined as per prescribed form i.e. TM-O. To file an opposition against any advertised mark prescribed fee is 2700 INR.

Place of filing

To be filed in the appropriate office (of application under opposition).

Contents of TM-O

The Notice of opposition should contain[8]

(i) Impugned application no.;

(ii) Indication of the goods or services from the trade mark application; and

(iii) Name of the applicant for the trade mark sought to be opposed.

(iv) where the impugned mark is a well-known trade mark within the meaning of sub section 2 of section 11, a statement as to the same and countries where it is recognized to be well-known;

(v) name of the opposing party, application number, mark etc.

Stages: Trademark Opposition

The following stages are involved in the Trademark Opposition filing procedure:

  1. Notice of Opposition: Any person can file a notice of opposition on a trademark that appears on trademark journal within 4 months from the date of publication. The opposition will be filled in the FORM TM -O[9].

The notice of opposition has to be filed and contested at the same office or branch where the original application for trademark registration has been filed by the Applicant. The trade mark status changes from “Advertised” to “Opposed” when a notice of opposition is filed by a third party.

Once the opportunity of opposing a trade mark is missed, the only viable remedy left is to file a petition for cancellation of the trade mark before Intellectual Appellate Property Board (IPAB) or the Registrar of Trade Marks.

  • Counter Statement: The lawstates that after the filing of the notice of opposition, the Applicant for the registration of subject mark, can file a counter statement, in Form TM-O, within 2 months (not extendable) of the receipt of the notice of opposition[10]. On failure of filing the counter-statement the application for registration deemed to be abandoned or deserted by the applicant and the Registrar will take it down from the journal and will not approve it for registration.
  • Producing Evidence in trademark opposition
  • Evidence in Support of Opposition: The rules state that the opposing party has to produce evidence to support its objection within 2 months (extendable by one month) of receiving the copy of the counter-statement filed by the applicant. The party also has the option of refraining from producing any evidence and relying solely on the opposition notice[11].
  • Evidence in Support of Application: after the opposing party files evidence in support of his objections, the applicant is also allowed a time of two months to produce evidence in his favor. He also has an option of not providing any evidence and to rely only on the counter statement[12].
  • Evidence in reply: Under the rules, the Opponent is given one additional month (extendable by 1 month) to file Evidence in response to the Applicant’s evidence[13].

Once this phase is over parties are not allowed to adduce any further evidence. However, the Registrar can exercise his discretion to ask for more evidence subject to cost and terms. An interlocutory application needs to be filled by the concerned party for this.

  • Hearing: After the evidence filing stage is over the Registrar shall give the notice to the parties stating the date of hearing, which shall be at least one month after the date of the first notice. Hearing is based on the notice of opposition, counter-statement, and evidence filed. The parties are required to notify the Registrar about their intention to appear for the hearing. There’s an option of adjourning the hearing also, and the request for it can be made under FORM TM-M, at least 3 days prior to the hearing, however one is allowed a maximum of two times only to request for an adjournment. Finally, the matter is heard by the Registrar and decided upon merits. If any of the party doesn’t show up for the hearing the Registrar will rule against his favor[14].
  •  Appeal: The Registrar shall upon hearing both the parties and reviewing the evidence submitted decides whether the opposition succeeds at establishing their objection or failed to do so, and in turn determines whether the trademark shall be registered or not thereby bringing the opposition proceeding to a conclusion. However, the party aggrieved by the Registrar’s decision may challenge the same by filing an appeal before the Intellectual Property Appellate Board.

In Pidilite Industries Limited v Registrar of Trademarks[15] the plaintiff was the largest adhesives manufacturer in India and the registered proprietor of the trademarks FEVI and FEVICOL. The plaintiff filed opposition proceedings against the defendant’s registration of the mark FEVIDIP in respect of pharmaceutical and medicinal preparations. The plaintiff asserted that its trademark was a household name in India, with members of the trade and the general public associating the name and the prefix exclusively with its products. After the opposition filing, the plaintiff was given time to file evidence, for which it sought an extension, which was granted. After the expiry of the extension period once its forms were filed with the registrar of trademarks, the forms were rejected, and the matter proceeded to the next stage. Instead of applying for legal remedy against the rejection, the opponent filed for a further extension to file evidence, which was denied.

On appeal, the Intellectual Property Appellate Board held that the registrar’s power to grant leave to file evidence is purely discretionary and must be exercised in good faith, particularly where there is good cause brought forth. The time for filing evidence can be extended but cannot exceed one month in aggregate after the stipulated limit of two months under Rule 50(1). The appellant, by not filing its evidence in the specified time, attracted the deeming fiction of Rule 50(2). Once it had failed to file its first evidence under Rule 50(1), there was no question of the registrar taking further evidence under Rule 53.

Moreover, the interlocutory petition contained no request for an extension or apology for the delay. In light of these facts and circumstances, the tribunal held that the registrar was correct in its decision not to allow the interlocutory petition.

Opposition provisions are meant to protect proprietary interests in trademarks, but the protection is not unconditional. Accordingly, delay in filing evidence and non-observance of due procedure can be detrimental to the opposition itself.

Conclusion

Registering a trademark in India takes a considerable amount of time, and god forbid, if your mark gets opposed by a third party, then inevitably, it takes a lot more time. While there is a structured procedure for the opposition proceeding, delays are still caused due to several reasons such as not following the set procedure. There is currently a huge backlog of cases at the Trademark Registry. Thereby it is suggested that there should be detailed scrutiny of trademark applications prior to their publication in the Trade Marks Journal. Similar marks must not be easily allowed to be advertised. This will help to reduce the number of oppositions filed by third parties, hence forth reducing the backlog of cases.

Author: Shivani Jain (Associate, Trademarks and Copyrights Department)

https://www.linkedin.com/in/shivani-jain-35477179/



[1] Section 21 of the Trademarks Act, 1999.

[2] Section 21(1) of the Trademarks Act, 1999

[3] Section 9 of the Trademarks Act, 1999.

[4] Section 11 of the Trademarks Act, 1999.

[5] Section 13 of the Trademarks Act, 1999.

[6] Section 14 of the Trademarks Act, 1999.

[7] Section 18(1) of the Trademarks Act, 1999.

[8] Rule 43 of the Trademark Rules 2017.

[9] Rule 42 of the Trademark Rules, 2017.

[10] Rule 44 of the Trademark Rules, 2017.

[11] Rule 44 of the Trademark Rules, 2017.

[12] Rule 46 of the Trademark Rules, 2017.

[13] Rule 46 of the Trademark Rules, 2017.

[14] Rule 50 of the Trademark Rules, 2017.

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