Author: Priyanshi Kocher, I year of LL.M.(Corporate Law) from Amity University, Rajasthan
Introduction
A trademark is typically a term, phrase, logo, or other symbol that a producer or service provider uses to distinguish their products or services from others'. The lengthy procedure of registering a trademark includes advertising the mark in the Trademark Journal. Under the Trademark Act of India, anybody may start trademark opposition actions during the trademark advertisement or re-advertisement of an application for registration. In the event that a trademark opposition is made, both the opposing party and the trademark application have the opportunity to be heard and reply to the opposition. This article examines the trademark opposition process in India.
Trademark Opposition
A third-party objection to a trademark registration application is referred to as antrademark opposition. The purpose of opposing a trademark registration is to protect the existing registered holder's right to prevent a similar or deceptively similar trademark from being registered.
Any interested third party, such as an individual, a company, or any person, may initiate the trademark opposition process within four months of the date of publication of an application in the Trademark Journal. A trademark registration can be challenged on a variety of grounds.
According to Section 21 of the Trademarks Act of 1999, any person may file an opposition to a trademark within the time limit specified. If an opposition is not filed within the time limit, it cannot be filed later, and the Registrar will proceed with trademark registration. According to Section 21 of the Trademarks Act of 1999, any person may file an opposition to a trademark within the time limit specified.
Who may challenge a trademark?
Any "person" who wishes to oppose a trademark application may do so by submitting a Notice of Opposition on the prescribed form and paying the necessary fee, according to Section 21 of the Trademarks Act, 1999. The Opponent is the party that files the notice of opposition. The opposing party does not need to be the registered owner of a trademark. He could be a buyer, a client, or a member of the general public who would probably use the products or services. The justification for this is that the opponent is speaking for both himself and the general public because there can only be confusion if there are two comparable marks on the market.
Grounds for opposing a trademark
Any individual may oppose a trademark on a number of grounds. Some of the grounds for opposing a trademark in India include the following:
The trademark is identical or similar to an already registered or used trademark.
The trademark lacks anything distinguishing about it.
The trademark is merely descriptive.
The application for trademark registration was made in dishonest faith.
The trademark is widely used in current speech or in the accepted business procedures.
The trademark has a high likelihood of confusing or misleading the public.
The trademark violates the law or is forbidden by the law.
In accordance with the Emblem and Names Act of 1950, the trademark is forbidden.
The trademark contains content that could offend anyone's religious sensibilities, regardless of their class or background.
How to file a trademark opposition claim?
Any person may file a notice of trademark objection within four months of the application's initial or subsequent publication in the Trademark Journal in order to begin trademark opposition procedures. The trademark opposition must be filed on Trademark Form 5 in accordance with the required procedures and fees. The following details should be included in the trademark opposition notice:
Application number, type of goods or services for which a trademark registration application was made, applicant name, and trademark registration application number are all included in the application against which a trademark opposition is filed.
Name and address information for the party opposing the trademark.
The Indian Trademark Opposition Process
Stage 1: Notice of Opposition (Rule 42)
Anyone who wishes to oppose the Trademark Registration must file a Notice of Opposition in Form TM-O with the prescribed fees within four months of the date of publication of the advertisement in the trademark journal. The notice should include information about the opposing party, the grounds for opposing trademark registration, and information about the application being opposed. The Registrar shall notify the trademark applicant upon receipt of the notice.
Stage 2: Opposition Notice Reply or Counter Statement (Rule 44)
The Trademark applicant must send a counterstatement in form TM-O within two months of receiving a copy of the notice from the Registrar, outlining which facts, if any, alleged in the notice of opposition are admitted by the applicant. The Registrar must provide a copy of the counterstatement to the opponent within two months of receiving it from the applicant. If the applicant fails to file the counterstatement within the time frame specified, the trademark registration application will be deemed abandoned.
Stage 3: Opponent's Evidence in Support of Opposition (Rule 45)
Within two months of receiving the counterstatement, the opponent must file evidence supporting the opposition in the form of an affidavit. If the opponent does not wish to present any evidence in support of his opposition but wishes to rely on the facts stated in the notice of opposition, he must notify the Registrar and the applicant in writing, or the notice of opponent will be deemed abandoned.
Stage 4: Applicant's Evidence in Support of Application (Rule 46)
The trademark applicant must also provide evidence in support of the application to the Registrar within two months of receiving the opponent's evidence/intimation. If the applicant does not wish to present any evidence in support of the application but wishes to rely on the facts stated in the counterstatement, he must notify the Registrar and the opponent in writing, or the application will be deemed abandoned.
Stage 5: Opponent's Evidence in Reply (Rule 47)
The opponent will also be given the opportunity to provide any additional evidence within one month of receiving evidence from the applicant. If the document is in a language other than Hindi or English, it must be translated into Hindi or English and submitted to the Registrar, with a copy provided to the opposing party.
Stage 6: Opposition Hearing
The Registrar shall notify the parties of the first date of hearing following the submission of evidence from both parties. The hearing date must be at least one month after the date of the first notice. The Registrar will give both parties an equal opportunity to be heard. Either party may request an adjournment of the hearing with a reasonable cause in form TM-M and the prescribed fee at least three days before the hearing date. The parties may request a maximum of two adjournments, with each adjournment lasting no more than 30 days.
Adjournment of Hearing
Any party may request a hearing adjournment by submitting an application in Form TM-M and paying Rs. 900.00. The registrar will postpone the hearing to the next available date if it is determined to be spurious.
Order of the Trademark Registrar on Notice of Opposition
If a party to the proceeding submits written arguments, the Registrar will consider them. The Registrar's decision shall be communicated to the parties in writing following the hearing of both parties. If the applicant or opponent fails to appear at the adjourned hearing date and time specified in the notice, the application or opposition may be treated as abandoned, and the Registrar will proceed with the matter accordingly.
Conclusion
When the Registrar rules in favour of the applicant, the trademark is registered and the trademark registration certificate is issued. The trademark registration application will be rejected if the Registrar rules in favour of the opposing party.
References
1. Section 21 of the Trademarks Act, 1999
2. Law relating to intellectual property rights (V.K Ahuja, 2007)
3. https://www.mondaq.com/india/trademark/1029386/trademark-opposition-in-india trademark opposition in India.