fbpx

A Comprehensive Guide On Trademarks Opposition

In India, trademark opposition occurs after the registrar has accepted the trademark application on the basis of distinctiveness and published the trademark of the third-party opposition in the journal.

Who can object to a trademark application in India?

During the trademark application stage, anyone can object to a trademark application filed by an applicant for a variety of reasons.

‘Any individual,’ according to Section 21 of the Trademark Act, can challenge a trademark, regardless of whether he has an economic or personal stake in the matter.

A trademark can be challenged by a consumer, a member of the general public, a rival, or anybody else. In addition, the individual filing the trademark opposition must have previously owned a registered trademark.

Who makes the decision about whether a trademark should be registered or abandoned?

Following the filing of trademark opposition, both parties must decide whether the trademark should be cancelled or registered. The right to file an opposition, on the other hand, is unrestricted. Anyone who considers the published mark may cause public misunderstanding can submit an objection, while the trademark registrant is responsible for defending the mark.

The Opposition to a Trademark

What is the trademark opposition process like?

Notice of Opposition

During four months of the very first date of publication on the trademark journal, anyone can file a notice of objections on a trademark.

It must be submitted in a specified manner on Trademark Form 5 and with the appropriate fees.

Counter-Statement

The trademark registrar will serve a copy of the trademark opposition notice to the trademark applicant after the trademark opposition notice is filed with the trademark registrar. The trademark applicant must file a reply statement within two months after receiving the objection notice.

The trademark application will be “abandoned” if the trademark applicant fails to file the counter statement within the prescribed time frame. It is, nonetheless, vital to comprehend the status of trademark registration.

Hearing

Following the evidence filing stage, the registrar must give notices to both parties announcing the date of the hearing, which must be at least one month after the first notice. The notice of objection, the counter-statement filing, and the filed evidence are all used to determine the outcome of the hearing. If one of the parties fails to appear for the hearing, the registrar will decide against him.

Appeals

The registrar decides whether the opposition was successful and, as a result, whether the trademark should be registered or not based on a study of the material provided and a hearing of both parties. However, a party that is dissatisfied with the registrar’s judgement may file an appeal with the Intellectual Property Appellate Board.

Trademark Opposition Time Limit

For three months after the trademark advertisement in the Trade Marks Journal, anybody can object to the trademark registration (which may be extended by a period not exceeding one month). Trademark opposition filings may only be done at the Trademark Registrar’s office; they cannot be submitted to a Court or an Appellate Board immediately (IPAB).

If a trademark objection is successful, the trademark’s registration will be denied. The brand will be registered if the trademark opposition application is denied.

What causes trademark opposition?

A trademark opposition can be filed under a variety of sections, including absolute grounds, relative grounds, forbidden marks, and even the proprietorship of the opposed brand.

There are no defined grounds for resistance in Indian trademark law. The following are some of the reasons why a trademark opposition may be opposed:

  • The trademark is confusingly similar to or identical to an already registered trademark.
  • The trademark has no distinguishing features.
  • The trademark is self-explanatory.
  • The application for trademark registration is made in ill faith.
  • The trademark is common in today’s terminology and/or in a company’s established processes.
  • The trademark is likely to deceive or confuse the public.
  • The trademark is illegal or is prohibited by law.
  • The Emblem and Names Act of 1950 makes the trademark illegal.
  • The trademark contains material that is likely to offend the religious sensitivities of any group or portion of the population.

Differences in Trademark objection and Trademark opposition

Objection to a trademark and resistance to a trademark are two independent processes. Even yet, individuals frequently mix up the two. We have attempted to explain the key difference between trademark objection and trademark opposition in this table.

Objection to a Trademark

Opposition to Trademarks

A trademark objection is issued by a trademark examiner.

A trademark is challenged by a third party.

It is not necessary to pay any fees.

Fees must be submitted in conjunction with the opposition response.

Within one month, a response should be submitted.

Within three months, a response should be submitted.

The procedure of trademark registration includes a trademark objection.

Opposition to a trademark is a different process.

In the absence of a response from the applicant, the trademark will be removed.

In the instance of trademark opposition, failure to respond will result in the trademark being removed.

After the rejection, you can file an appeal.

After the verdict has been rendered, an appeal can be filed.


Frequently Asked Questions on Trademark Opposition

  1. What is the difference between trademark opposition and trademark infringement?

A trademark opposition can be filed by a person who believes that the registration of a mark would harm his or her brand name or the company’s reputation.

  1. How long do you have to file a trademark opposition?

The opposition notice must be filed within three months of the trademark being published in the trademark journal, and it can be extended by one month.

  1. What if the opposition is lodged after the three-month period has expired?

If the trademark opposition is filed after the three-month period but before the four-month time has expired, the notice of opposition shall be accompanied by request for an extension, detailing the cause for the delay.

  1. Who has the right to contest a trademark?

Anyone can register a trademark objection; however, most oppositions are filed by the trademark owner or a person who owns a mark that deals with similar goods and services.

Follow Us
become a client

Ready to Get Started?