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Trademark Opposition
Trademark opposition in India comes at a stage after the registrar has approved the trademark application on the grounds of distinctiveness and published the third-party opposition’s trademark in the journal.
Eligibility
According to Section 21 of the Trademark Act, ‘any person’ can oppose a trademark, irrespective of their commercial or personal interest in the matter. This means that not only registered trademark owners but also customers, members of the public, competitors, or any individual can file a trademark opposition.
The process of trademark opposition allows parties to challenge the registration of a trademark. Once a trademark opposition is filed, both the party opposing the trademark and the applicant for the trademark registration must engage in a legal process to determine whether the trademark should be abandoned or ultimately registered.
Trademark opposition serves as a critical mechanism for protecting the integrity of trademarks and ensuring that they do not create confusion in the marketplace. It allows concerned individuals or entities to voice their objections and seek resolution through a formal legal process.
Grounds For Trademark Opposition
The Indian trademark law does not provide any specific grounds of opposition. There are various reasons a trademark opposition may be opposed mentioned below:
- The trademark is similar or identical to an earlier or existing registered trademark.
- The trademark is devoid of distinctive character.
- The trademark is descriptive.
- The trademark registration application is made with bad faith.
- The trademark is customary in the current language and or in the established practices of a business.
- The trademark is likely to deceive the public or cause confusion.
- The trademark is prohibited under the Emblem and Names Act, 1950.
- The trademark is prohibited under the Emblem and Names Act, 1950.
- The trademark contains matters that are likely to hurt any class or section of people's religious feelings.
Procedure for Trademark Opposition
Opposition Notice
Within four months from the initial appearance of a trademark in the trademark journal, any individual has the right to file a notice of opposition against it. This notice must be submitted using the specified Trademark Form 5, adhering to the prescribed format, and accompanied by the relevant fees.
Counter-Statement:
Following the submission of the trademark opposition notice with the registrar, a copy of this notice will be served to the trademark applicant. It is incumbent upon the trademark applicant to respond by filing a counter statement within two months of receiving the opposition notice. Failure to do so within the stipulated timeframe could result in the abandonment of the trademark application. It is essential to grasp the implications of this on the trademark registration process.
Hearing:
Upon the completion of the evidence filing stage, the registrar will issue notices to both parties, notifying them of the hearing date. This hearing must be scheduled at least one month after the initial notice. The hearing centers around the opposition notice, the counter-statement, and the evidence presented. During the hearing, the registrar adjudicates the case, and if any party fails to attend, the ruling will go against them.
Appeals:
The registrar makes a determination on the success of the opposition by assessing the submitted evidence and conducting the hearing. This decision affects whether the trademark should be registered or not. However, parties dissatisfied with the registrar’s verdict have the option to appeal to the Intellectual Property Appellate Board.
Time Limit for Trademark Opposition:
Subsequent to the trademark’s publication in the Trade Marks Journal, there is a three-month window for anyone to oppose the trademark’s registration. This period can be extended by up to one month. Trademark opposition filings are exclusively handled by the Trademark Registrar’s office and cannot be directly brought to a court or the Appellate Board (IPAB).
In the event of a successful trademark opposition, the trademark’s registration will be denied. Conversely, if the trademark opposition application is rejected, the brand will be registered.
Filing Trademark Opposition
Information regarding the trademark application subject to the opposition: This entails the application number against which the opposition is being raised, an indication of the goods or services listed in the trademark application being opposed, and the name of the applicant for the trademark.
Details of the prior mark or earlier right on which the opposition is founded: If the opposition stems from an existing trademark application or a registered trademark, it should include the application number or registration number of the prior mark. If the opposition is based on a mark alleged to be a well-known trademark, it should specify in which country or territory the earlier mark is recognized as well-known.
Details of the opposing party: If the opposition is lodged by the owner of a prior mark or earlier right, their name and address should be provided, along with confirmation of their ownership of said mark or right. If the opposition is initiated by the successor in title to a registered trademark proprietor who has not yet been officially registered as the new proprietor, their name, address, and the date of the application for the new proprietor’s registration must be indicated. In cases where the opposing party lacks a business presence in India, the opponent’s name and their address for service in India should be specified.
Grounds for the opposition: Explain the reasons for the opposition, specifying the legal grounds on which it is based.
Form TM-5
For opposing a trademark Form, TM-5 must be filed by the opponent. As per the application, the opposition of the trademark must be filed in the appropriate trademark office. The TM-5 form must contain the following details:
Details about the trademark application
- Impugned application number
- Indication of the goods or services from the trademark application
- The name of the applicant for the trademark sought to be opposed.
Details about the opposing party
If the opposition is filed by the trademark owner of an earlier mark:Name and address of the trademark owner, along with a clear indication of their status as the trademark owner of the said mark.
If a trademark licensee files the opposition:Name and address of the trademark licensee, accompanied by a statement confirming their authorization to submit the opposition.
If a successor files the opposition on behalf of the registered trademark owner:Name and address of the successor, and an indication of the date on which the application for the new proprietor’s registration was received by the appropriate office. In cases where this specific date is not available, it should be indicated that the application was sent to the appropriate office.
If a party located outside India files the opposition:Name and address of the opposing party and their designated address for service in India.
The notice of opposition should be signed by the trademark opponent or an authorized representative who is well-informed about the particulars of the case.
Difference between Trademark Objection and Trademark Opposition
People often get confused between trademark objection and trademark opposition. We have a table to explain the fundamental difference between the trademark objection and trademark opposition.
| Trademark Objection | Trademark Opposition |
|---|---|
| A Trademark Examiner issues trademark objection. | A trademark gets opposition from a third party. |
| One does not need to pay fees. | Fees are required to be submitted along with the reply to the opposition. |
| A reply should be submitted within one month. | A reply should be submitted within three months(which may exceed not more than one month) |
| Trademark objection is a part of the registration process. | A trademark opposition is a different process. |
| If there is no response from the applicant, it leads to the removal of the trademark. | Similar is the case with trademark opposition; no response will lead to the removal of the trademark. |
| An appeal can be made after the rejection. | An appeal can be made after the judgment is passed. |
Trademark vs Copyright vs Patent
| Trademark | Patent | Copyright | |
|---|---|---|---|
| What’s protected | Any word, phrase, symbol or design that recognizes and differentiates the source of one party’s goods from those of another. | Inventions, such as procedure, manufacturer, composition, machines of matter as well as improvements to these. | Books, articles, music, photography, sculptures, dances, sound recordings, motion films and other original works of authorship. |
| Requirements for protection | A mark must be distinguishable, in the sense that it must be able to identify the source of a certain good. | A fresh, valuable, and unusual invention is required. | A work must be unique, original, and created in a tangible manner. |
| Term of protection | As long as the mark is used in commerce. | 20 years | Author’s life span+ 70 years. |
| Rights Granted | Right to use the mark and to prohibit others from using identical marks in a way that could create confusion about the goods or services’ origin. | Right to restrict others from manufacturing, selling, or importing the patented invention. | Copyrighted works have the power to dictate their reproduction, creative works, circulation, public performance, and display. |