Trademark Opposition Process: Meaning, Procedure & Documents Required
As you can imply from its name, the trademark opposition process in India is a way of raising an objection. This issue has the potential to destroy brands or damage businesses. For example, suppose you have applied for a trademark registration for your brand, and suddenly you get a notice stating you have violated some rules.
This is what happens when a third party launches a trademark opposition. If you are interested to know more about this process, continue reading!
What is the Meaning of Trademark Opposition?
Trademark opposition stands for an objection that any third party raises against registering a trademark published in the journal. Two legal acts, Trademark Act 1999 and Trade Marks Rules 2017, contain information about this process. As per them, any resentful third party can raise this issue within four months of the scrutiny period.
Who Can Oppose a Trademark?
To oppose a trademark, one needs to meet the following eligibility criteria:
- Section 21 of the Trademark Act suggests any person can oppose a trademark irrespective of their commercial or personal interest.
- Whoever is filing this opposition must own a prior trademark.
What Are the Reasons for Trademark Opposition?
There can be several reasons for opposing a trademark, and from a broad perspective, we can divide it into two categories:
1. Absolute Grounds
- A trademark contains generic terms.
- Any brand falsely identifies itself with another location where it does not belong.
- In case a brand is copying an existing brand.
- If trademark registration is applied with bad faith.
2. Relative Grounds
- Someone opposing a trademark on a priority basis.
- If a trademark harms any current brand name.
- A brand name is similar to a domain that is already registered.
- The trademark is identical to a popular brand, even if it is not previously registered.
What Is the Procedure for Trademark Opposition in India?
To raise a trademark opposition, one has to go through certain stages. This is how an individual can oppose a brand name.
Stage 1: Opponent Files a Notice
Anyone who wants to oppose a trademark registration can issue a notice. Those giving this notice must file it within four months of its publication in the trademark journal. To point out this notice, an opponent has to file it through Form TM-O and pay a specific fee.
In this notice, it is mandatory to mention the details of the opposition trademark along with its grounds of opposition. After receiving this notice, the registrar issues a copy of the same and sends it to the trademark applicant.
Stage 2: Applicants File Counterstatement
Within two months of receiving the notice from the registrar, the trademark applicant must send a counterstatement. This statement should clarify any alleged facts.
Registrar then sends out a copy of the counterstatement within two months. If the applicant fails to send this report, their trademark application will be rejected.
Stage 3: Opposing Party Provides Evidence
After receiving a counterstatement, the opponent must provide evidence supporting his claim. However, this is not compulsory.
There are instances where an opponent does not want to produce any further evidence but relies on the facts stated earlier. Hence, the opponent should convey this to the registrar in writing. In case of failure, they will abandon the application.
Stage 4: Applicant Also Provides Evidence
The trademark applicant also gets a chance to prove their stance. Therefore, within two months of receiving the evidence from their opponent, they revert to their evidence.
Suppose an applicant wants to refrain from offering any further evidence and relies on their original statements. They need to inform the registrar in writing. If they fail to send these reports, the registrar rejects their application.
Stage 5: Opposition Gets Another Chance to Reply with Evidence
Within a month after receiving the evidence from the applicant, their opponent gets another chance to provide additional evidence. If they have a document as evidence and it is in any other vernacular, they must translate it into Hindi or English.
This translated version is given to the registrar, and they pass on a copy of the document to the trademark applicant.
Stage 6: Registrar Hears From Both Parties Before Making Any Decision
Once the registrar receives all the evidence from both parties, they can set a date for their first hearing. This date must be at least a month after the first notice. The registrar provides equal opportunity to either party to produce their statements.
Anyone who wants to adjourn the hearing can request it by filling out a TM-M form. However, there are some restrictions. For instance, they have to pay ₹ 900, they get only two adjournment requests, and the adjournment request cannot be more than 30 days.
What are the Documents Required During Trademark Opposition Process?
For filing a trademark opposition process in India, one needs the following documents:
- Notice of opposition (Form TM-O).
- Signed copies of evidence from both parties.
- Details of either party's trademark attorney.
- Sales invoice.
- Advertisement copies.
- Product images.
- Government registration certificate.
- Social media accounts screenshots.
- Letterhead copy.
- Visiting card.
Thus, the trademark opposition process in India is a legal process that anyone can apply for. If the registrar decides to favour an applicant, their brand receives the registration certificate. On the other hand, suppose the registrar approves the opposition's request; this results in the rejection of the trademark registration.