Trademark opposition comes into play when a trademark is advertised in the Trade Mark Journal, published by the Trade Marks Registry. The whole purpose of advertising a trademark is to let the third party view the trademark and if required, file an opposition as well.
Who Can Oppose A Trademark?
Any person may give a notice of opposition to the registration of a trademark. The person filing the opposition does not have to be a registered proprietor. He can be anyone, no personal interest or a prior commercial reason is required to file the opposition.
Time Limit for Trademark Opposition and Prescribed Fee
Limitation period for filing notice of opposition is four (4) months from the date of advertisement or re-advertisement of an application for registration in the Trademarks Journal.
Amount payable for notice of opposition if the notice is filed physically is three thousand rupees (INR 3,000); for e-filing, it is two thousand seven hundred rupees (INR 2,700). The fee is for each class opposed or counter statement filed.
Procedure of Opposition:
- Contents of TM-5 (Notice of Opposition)
- In respect of an application against which opposition is entered-
- Impugned application number,
- Indication of the goods or services from the trademark application,
- Name of the applicant for the trademark sought to be opposed.
- In respect of the earlier mark or the earlier right on which the opposition is based-
- Where the opposition is based on an earlier mark, a statement to that effect and an indication of the status of earlier mark,
- Where available, the application or registration number and the filing date including the priority date of the earlier mark,
- Where the opposition is based on an earlier mark which is alleged to be a well known mark, an indication to that effect and an indication of the country or countries in which the earlier mark is recognized to be well known,
- A description of the mark of the opponent and where appropriate, a description of the mark or earlier right.
- In respect of the opposing party-
- Where the opposition is entered by the proprietor of the earlier mark, his name and address and an indication that he is the proprietor of such mark,
- Where the opposition is entered by a licensee not being a registered user, the name and address of the licensee and an indication that he has been authorized to enter the opposition,
- Where the opposition is filed by a successor to the registered proprietor who has not yet been registered as a new proprietor, and indication to that effect, the name and address of the opposing party and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office or, where this information is not available, was sent to the appropriate office, and
- Where the opposing party has no place of business in India, the name and address of the opponents for service in India.
After the notice of opposition is served to the applicant of the trademark, he has to give a reply or a counter-statement for the same, the counter-statement must be filed within two (2) months of the receipt of the notice. If the applicant fails to present the counter-statement within the prescribed time, the mark is considered to be abandoned and no further extension of time is given to the applicant.
- Mode of Evidence
Both the opponent and the applicant have to give evidence on affidavits, The Registrar may, in his discretion, allow oral evidence also.
- Filing Evidence in Support of Opposition:
Any evidence in support of opposition must be filed within two (2) months from the date of receipt of a copy of the counter-statement. The Registrar may, on a request, extend the period of filing of evidence to a period not exceeding one (1) month in aggregate.
Within the aforesaid time, the opponent must either file evidence or may rely on the facts already stated in the notice of opposition, in which case he must intimate the same in writing to the Registrar and the applicant as well. The copies of any evidence filed by the opponent must be delivered by him to the other party and a written intimation thereof must be given to the Registrar.
In case the opponent neither files evidence in support nor intimates as prescribed, he is deemed to have abandoned his opposition, in which case an order to that effect shall be issued to the parties.
The applicant files evidence in support of his application as well. The time period and the procedure are same as that of filing the evidence of opponent.
- Filing Evidence in Reply by Opponent
The opponent may, within one (1) month from the receipt of the copies of the applicant’s affidavit, file evidence in reply, if any. The evidence is to be confined to matters strictly in reply. The copies of evidence in reply must be delivered by the opponent to the applicant.
- Hearing of cases
Upon completion of the evidence stage, the Tribunal Section generates the hearing notice mentioning therein the first date of hearing. The notices are sent to the parties or their authorized agents who are presently on records. The date of hearing is to be at least one (1) month after the first notice.
A cause list is prepared on monthly basis which is displayed on the notice board and is put up in the official website. Within fourteen (14) days from the receipt of first notice, any party, who intends to appear, shall so notify failing which the party may be treated as not desiring to be heard and the matter may proceed accordingly. The hearing is conducted by the Hearing Officer as per the cause list.
After conclusion of the hearing, the Hearing Officer gives his decision along with facts and materials considered by him in arriving at decisions, at the earliest. It is then communicated to the parties concerned and is incorporated in the ‘decision process’ of ‘opposition’ module and the status of opposition and application opposed is updated accordingly.
Filing a trademark opposition is no easy task. Even though any person can file the opposition, it is advised to consult an attorney before filing the opposition so as to avoid any shortcoming that can arise in the future.