Trademark Opposition

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Once the registry accepts a trademark application, it undergoes a crucial step – publication in the government journal for four months. During this phase, any general public member can raise Opposition against the trademark. This stage holds significant importance in determining whether the trademark can proceed toward registration or if valid objections need to be addressed. Ground Solution stands ready to offer expert assistance and guidance to navigate the trademark opposition process, ensuring a seamless and effective resolution.

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Trademark Opposition

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Under the Trademarks Act of 1999, trademarks can be registered in India. To do this, trademark owners must submit their application to the Registrar of Trademarks. Once the Registrar reviews the application, they will publicize the trademark in the official trademark journal. Any individual can challenge the registration of a trademark once it's listed in the Trademark Journal. Such challenges or oppositions should be directed to the Trademark Registry, where the original application was made. Should any opposition arise, the trademark registry will hold a hearing to resolve the issue.

The procedures and guidelines for trademark opposition are outlined in the Trademarks Act, 1999 and the Trade Marks Rules, 2017.*

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Initiation of Trademark Opposition - Eligibility

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• According to Section 21 of the Trademark Act, 'any person' can oppose a trademark, irrespective of their commercial or personal interest.

• A trademark can be countered by filed by a customer, member of the public or competitor, or any other person. Also, the person filing the trademark opposition needs to be a prior registered trademark owner.

• After a trademark opposition is filed, both parties need to conclude whether the trademark should be abandoned or registered.

• Anyone who believes that the published mark might create confusion among the public can file for the Opposition while defending the trademark lies in the trademark registrant's hands.

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Grounds For Trademark Opposition

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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 contrary to the law or prevented by law.

• 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.

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Trademark Opposition Procedure

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The process of trademark opposition is as follows:

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Initiating a Trademark Opposition

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Suppose an individual wishes to oppose a trademark. In that case, they can submit their concerns to the Registrar within four months from the date the registration application was advertised in the trademark journal. This is done using Form TM-O, accompanied by the necessary fee.

This opposition notice should detail the trademark registration application, information about the opposing party, and the reasons for Opposition. Within three months of receiving this, the Registrar will forward the applicant a copy of the opposition notice.

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Stage One: Responding with a Counter statement

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Upon receiving the opposition notice, the applicant has a two-month window to submit a counterstatement using Form TM-O. This statement should clarify their stance. The Registrar will provide the opposing party with the applicant's counter statement within two months.

If the applicant doesn't respond within the specified two months, their trademark registration application is deemed abandoned, halting the registration process.

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Stage Two: Presenting Evidence in the Opposition Process

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The party opposing the trademark must present Evidence backing their Opposition to the Registrar within two months of receiving the applicant's counterstatement. This Evidence should also be shared with the applicant.

Subsequently, the applicant has two months to submit Evidence supporting their application after receiving the opposition evidence. This Evidence must be shared with both the Registrar and the opposing party.

Optional Stage Three: If needed, the opposing party has another month to submit further Evidence after receiving the applicant’s Evidence. This, too, must be shared with the applicant and the Registrar.

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Hearing & Determining the Outcome of the Opposition

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The Registrar schedules a hearing after the evidence exchange, notifying both parties. Should the opposing party be absent, their Opposition is dismissed, leading to the trademark's registration. Conversely, if the applicant is absent, their application is considered abandoned and is dismissed. All written arguments provided by both sides will be taken into account.

Post deliberation, the Registrar determines whether to register the trademark or dismiss the application. This decision is then communicated in writing to both parties at their specified addresses.

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Conclusion & Final Steps in the Trademark Opposition Procedure

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If the Registrar rules in favor of the applicant, the trademark gets registered, and a certificate is issued. However, the trademark registration application is denied if the decision is in the opposing party's favor.

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Importance of Compliance with Filing Requirements

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Both the applicant and the opposing party must adhere to filing requirements during the opposition process, as failure to do so can have serious consequences:

• Abandonment of Opposition: Failure to submit counter-reply or supporting documents on time may lead to the abandonment of the Opposition, allowing the trademark application to proceed.

• Removal of Trademark Application: If the applicant fails to respond or provide necessary Evidence, the trademark application may be removed, preventing registration.

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Significance of Trademark Opposition in India

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The trademark opposition procedure in India ensures that only deserving trademarks are granted registration. It facilitates public participation and prevents conflicting trademarks from coexisting in the market. Timely adherence to timelines and filing requirements is crucial for effective case presentation.

If you're facing trademark opposition or considering opposing a trademark, consult Ground Solution for expert guidance and support throughout the process.