What does Trademark Opposition mean?
In the trademark journal, the application which is filed for the registration of trademark is advertised by the registrar and the opportunity is given to the third party to oppose the same within a period of 4 months from the date of advertisement. “Opposed” status shall be reflected once the opposition against the trademark is filed by the third party.
The examination process is followed after the submission of trademark registration application and when such application is found suitable by the registrar for registration it will be published in the Trademarks Journal and the third party get the opportunity to oppose the mark. The main motive is to aware the public about the work of the company through such publishing.
Trademark Objection and Trademark Opposition, these are the two main obstacles while obtaining the trademark registration. Application filed can be rejected/ cancelled where the reply / response to the opposition is not filed. A legally week counter statement mostly results in rejection or cancellation of Trademark registration.
In such case of Trademark opposition, hiring of a qualified professional is recommended who has the updated knowledge, strong drafting defense skill of reply / response to the opposition raised.
Who all eligible to file a Trademark Opposition?
- Person such as an individual, companies, partnership firms, and trusts can file the opposition notice.
- It is possible that there can be joined opposition as opponents against such trademark registration in case where there are 2 or more persons have the same issue.
- Same trademark application has been applied by the earlier applicant
- A person who has used such trademark earlier.
Where the Trademark Opposition Notice is filed in India?
At the trademark registry, notice regarding the trademark opposition can be filed.
What is the procedure if status of the trademark registration appears as "opposed"?
Within a period of 4 months (3+ 1 month extendable) from the date of advertisement, you are required to prepare and submit the counter statement for the opposition raised.
In case no counter statement is filed with the trademark registry within the stipulated time period, then in such case, application for trademark registration shall be abandoned.
Fees required for Trademark Opposition
Reply for Trademark opposition
Rs. 29999 (Excluding GST) + Government Fees (Online 2700+ GST and Offline 3000+GST)
Reply for Trademark opposition + complete services and follow ups
Rs. 49999 (Excluding GST) + Government Fees (Online 2700+ GST and Offline 3000+GST)
For what reasons the Trademark opposition in India can be opposed?
Following are the mentioned cases in which the Trademark opposition is filed:
- When a similar mark published in the journal or
- Where the mark is non-distinctive and is descriptive nature
- The application for the trademark is not is a good spirit and on bad faith.
- The mark is already established practices of a business or a customary in the current language.
- Where such trademark is likely to create confusion and contrary to the law.
- Where such trademark is prohibited under the Emblem and Names Act, 1950
- Where such mark is likely to hurt religious feelings of any class or section of people.
What stages are involved for Trademark Opposition in India?
The following stages are involved in the Trademark Opposition procedure:
- Step1: Trademark opposition notice can be filed within a period of four months from the date of advertisement by any aggrieved person.
- Step2: Applicant is required to file the counter statement within a period of 2 months of the receipt of the notice of opposition.
- Step3: Supporting documents are required to be attached along with the submission of Counter-Statement by way of an Affidavit.
- Step4: Relevant and certain documents are also required to be submit by the opponent supporting his arguments however, he has an option of not submitting the same after writing to the Registrar that he/she does not desire to file evidence and all he has the facts to support his arguments.
- Step5: 1 month shall be allowed to the Opponent to file his evidence (extendable by 1 month) to response the evidence filed by the Applicant.
- Step6: Hearing shall be conducted by the registrar on the basis of notice of opposition, counter-statement, and evidence filed.
- Step7: Intention to appear in the matter shall be informed by the both parties within a period of 14 once the notice of the hearing is received by the parties.
- Step8: The decision shall be taken by the registrar after providing the opportunity of being heard to both the parties.
- Step9: Certificate of registration shall be granted where the decision taken is in favor of the applicant and the trademark shall be registered other application for trademark shall be rejected by the registrar due to such opposition if the decision is in favor of the opponent party.
NOTE 1: Applicant shall be deemed to have abandoned if the counter statement is not filed within a period of 2 months.
What distinguishes the trademark objection and trademark opposition?
- Trademark objection shall be issued by the trademark examiner upon the dissatisfaction of the application filed by the applicant whereas, the aggrieved (third) party files the trademark opposition against the trademark application.
- Specific Fees are required to be submitted by the person who are filing the opposition and on the other hand the person raising the objection is not required to pay any fees for such objection.
- Within a period of 1 month from the date of advertisement, the objection must be raised by the trademark examiner and in case of trademark opposition, it is to be raised within a period of 4 months from the date of advertisement.
Frequently Asked Questions about Trademark Opposition
Any person who has used the same or a similar trademark but have not obtained the registration of such trademark prior to the client, is known as a prior user.
Additional evidence may be filed by the applicant through an Interlocutory Petition along with the requisite fee.
State flags & hallmarks, process, similar existing marks, generic words are out of the scope of trademark because they do not fall into the criteria for the trademark registration.