An objection submitted by a third party against the registration of a trademark that has been approved and published in the Trademark Journal is known as a trademark opposition. Thus, Trademark Opposition is an important process that helps businesses to oppose the misuse of their trademarks. You can apply for Trademark Opposition within a specific period. In this article, we will understand all about trademark opposition in India.
Any person or business can file a trademark opposition application in the prescribed format as per the Trademarks Act 1999. Thus, even if you don’t have your own trademark registration in India, you can still apply for the Trademark Opposition to oppose other trademarks.
What is Trademark Opposition?
Trademark Opposition is the stage when someone opposes your trademark registration. Here, You can also check how to Apply for Trademark Registration online in India, there is a stage where the trademark is published in the Trademark Journal.
The trademark journal allows the general public and others to file a notice of opposition to the trademark.
The Trademark Registry accepts oppositions from any natural or legal person. This comprises individuals, businesses, partnership firms, and trusts (s).
Important Note: The person registering the objection does not need to have a monetary interest in the case or a previously registered trademark with the Registry to file the opposition.
Step-wise procedure for Trademark Opposition
If you want to apply for trademark opposition in India, you need to follow the steps as follows.
Apply through Form ™-O
You must submit the Form ™-O to oppose the trademark registration in India. The application should be submitted along with the requisite fees. Furthermore, the applicant needs to submit the form within the duration of 4 months. The time period of four months starts from the publication date in the trademark journal.
The application form should contain all the necessary details such as:
- Details of the applicant,
- Agent of the Applicant,
- Purpose of Trademark Opposition,
- Grounds of Opposition, Details of Counter-Statement, etc.
Receive Trademark Objection Reply from Trademark Registration Online
In this step, you will have to wait to receive the Trademark Objection Reply from the party that you are opposing. The opposed Trademark Registration Applicant has to submit a counter-statement within two months. The trademark registration applicant also needs to submit their counter-statement to the trademark registrar.
However, If the applicant doesn’t submit any reply to the objections raised within the duration of two months, the trademark registration application will be regarded as Abandoned.
Appear for Trademark Hearing as an Opposition
As a consequence of the above steps, The opposition moves to the evidence stage if the Applicant submits a countering statement.
After the evidence submission process is performed, the registrar will issue notices to both parties announcing the hearing date, which would be at least a month after the first notice. The hearing is conducted on the opponent’s notice, counter-statement submission, and evidence provided.
Both sides will have an equal right to be represented by the Registrar. Any party may apply the postponement of a hearing with proper justification in form TM-M, together with the specified fee, at least three days prior to the actual preliminary hearing.
The parties can seek a maximum of two postponements of the Trademark Hearing, with each postponement lasting no longer than 30 days. Failure to attend for the hearing or failure to give fair cause will be seen as a refusal to be heard, and the case will continue accordingly.
Final Appeals and The Judgement regarding Trademark Opposition
After the filing of written appeals and final hearing, The Registrar’s judgment shall be notified to the applicants in writing once both parties have been heard. The registrar evaluates whether the opposition was valid and, as a result, whether the trademark registration should really be issued or not. However, a party that is dissatisfied with the registrar’s judgment can re-appeal with the Intellectual Property Appellate Board.
When can you oppose a Trademark Registration?
You have three months from the date of the proposed trademark’s publication in the Register of Trademarks to file an opposition to its publication. Only in exceptional cases can the duration be increased up to one month. Hence, you need to apply for Trademark Opposition within the duration of four months from the publication date.
Difference between Trademark Objection and Trademark Opposition
|Trademark Objection||Trademark Opposition|
|The Trademark Registrar opposes the trademark registration.||Any third party opposes the trademark registration.|
|The Trademark Registrar doesn’t pay any fees for the objection.||Third parties have to pay nominal government fees for trademark opposition.|
|It comes under the complete trademark registration process in India.||The Opposing process is different from the Trademark Registration online Process. Even if you don’t have any trademark registration, you can apply for the trademark opposition.|
|An applicant needs to reply to the trademark registrar and satisfy his concerns.||The applicant of Trademark Registration needs to submit counter statements to the third party and the registrar of trademarks. The decision of the trademark registrar will be the final.|
Can you oppose Trademark Registration after 4 Months?
After the requisite four months of publication, no opposition can be filed. If no objection is filed within four months of the trademark having been published in a trademark journal, the Registrar will enroll the trademark in the records and issue a trademark registration certificate.
What are the grounds of opposing Trademark Registration?
You can oppose a trademark if:
- The mark that is devoid of any distinguishing features or includes indicators that may be used in commerce to denote quality, quantity, intended purpose, values, geographical origin, or manufacturing time.
- The mark has the potential to deceive or confuse people. This includes any mark that may be linked to a previously registered trademark or that has become popular in the industry.
- It contains material or content that may offend the religious beliefs of any class or group of people.
- The Emblem and Names Act of 1950 makes the mark illegal.
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