Trademark Opposition

Opposition

The registrar will approve the Trademark Registration, once he has no objection with the distinctiveness in the name or logo and the published third-party oppositions trademark in the journal.

Who opposes the Application?

1. During the application stage, for many reasons an individual can oppose the application filed.
2. Section 21 of the Trademark Act says any person besides his/her commercial or personal interest can oppose the application.
3. A prior registered trademark owner can oppose the application file.

Only the registrar of a trademark can approve or reject an application.

How an Application is Opposed?

• Notice on Opposition -Any person can file a notice on the opposition, with the opposition's trademark in the journal within 4 months from the date of publication.
• Counter-Statement – After filing an opposition, a notice will be issued to the applicant. For 2 months, he/she must file the counter statement.
• Hearing – Both parties will receive notices stating the hearing date. The hearing will be done based on a notice of the opposition, counter-statement, and all the submitted evidence. If any of the parties failed to show up, the registrar has the right to rule against him.
• Appeals – The registrar can accept/deny the application on trademark registration deciding on the ground of hearing and submitted evidence. The resentful party can approach the Intellectual Property Appellate Board.

Form TM-5 is filed when opposing, in the proper Trademark office. This must contain an 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.

The opposing party must have:

1. If the opposition is by the earlier trademark owner, his/her name and address and indication proving his ownership
2. If the opposition is by the trademark licensee, his/her name and address, and indication showing the authorship.
3. If the opposition is by the successor against the trademark owner, his/her name and address and the date on which the application for registration of the new proprietor was received at the proper office.
4. If the opposition is from outside India, the name and address of the opposing party addressing India’s service.

When and Why the Opposition?

1. A similar or identical application to an existing registered trademark.
2. The one lacking distinctive character.
3. When it is descriptive.
4. Betraying the public or the one confusing.
5. Different to the law or prevented by law.
6. Under the Emblem and Names Act, 1950.
7. Matters that might offend any class or section of people’s belief.