Trademark Opposition

TRADEMARK OPPOSITION

DEFINITION

A trademark application filed by an individual can be opposed by any person for multiple reasons during the trademark application stage. An individual filing the opposition doesn’t need to have any commercial or personal interest in the matter/or have to be a prior registered trademark owner.

OPPOSING A TRADEMARK APPLICATION

As per Section 21 of the Trademark Act, “any person” can file a trademark notice, irrespective of commercial/ personal interest in such a matter. The question of bona fides of the opponent does not arise. Thus, trademark opposition can be filed by a customer/member of the public/competitor/any other person. Also, the individual filing the trademark opposition doesn’t have to be a prior registered trade mark owner.

REASONS FOR TRADEMARK OPPOSITION

A trademark opposition can be filed under different sections such as

• The trademark may be similar/identical to an earlier/existing registered trademark
• The trademark is devoid of any distinctive character
• The trademark is very descriptive in nature
• The trademark registration application has been made in bad faith
• The trademark is customary in the current language, or in the established practices of a business
• The trademark may deceive the public or create confusion
• The trademark is contrary to the law or is prevented by law
• The trademark is banned under the Emblem and Names Act, 1950
• The trademark contains symbols/text that may hurt religious feelings of any class or section of people

TIME LIMIT FOR TRADEMARK OPPOSITION

After an advertisement of a trademark is placed in the Trade Marks Journal, any individual can oppose registration of the said trademark for a period of 3 months (This period can be extended by a period of 1 month). A trademark opposition filing can only be done at the Trademark Registrar office. This cannot be taken directly to a court or the appellate board (IPAB). If a trademark opposition is successful, the registration of the said trademark will be declared void. If on the other hand the trademark opposition application is rejected, the said trademark will proceed for registration.

TRADEMARK OPPOSITION PROCEDURE

To start the trademark opposition proceeding, a notice of trademark opposition must be filed by any individual within four months of date of advertisement or re-advertisement of the said trademark application in the Trademark Journal. The trademark opposition must be filed in Trademark Form 5 in the prescribed manner with applicable fees. The trademark opposition notice must contain the following information:

• Application against which trademark opposition has been entered. This should include trademark registration application number
• The class of good or services for which the said trademark registration application was submitted
• The name of the applicant of the trademark application
• The contact details of the trademark opposition party

GROUNDS FOR TRADEMARK OPPOSITION.

Once a trademark opposition notice is filed with the Trademark Registrar, the Registrar will serve a copy of the trademark opposition notice to the trademark applicant. Within two months of receipt of this notice, the trademark applicant has to file a counter statement. If the trademark applicant fails to file the counter statement within the prescribed period, the trademark application is deemed to have been “abandoned”. Based on the trademark opposition filed and the counter-statement filed, the registrar will call for the hearing of the parties. At this hearing the registrar has the option to rule on the trademark registration application and the trademark opposition filing based on the evidence submitted.

Form TM-5

Form TM-5 has to be filed by a person for opposing a trademark. The opposition must be filed in the appropriate trademark office, as per the application. The trademark opposition or TM-5 should contain the following details:

DETAILS ABOUT THE TRADEMARK APPLICATION

• The Impugned Application Number
• An indication of the goods or services from the trade mark application
• The name of the applicant for the trade mark sought to be opposed

DETAILS ABOUT THE OPPOSING PARTY

• OPPOSITION FILED BY TRADEMARK OWNER OF AN EARLIER MARK: The name and address of the trademark owner. The indication that he or she is the trademark owner of such trademark or right
• OPPOSITION FILED BY A TRADEMARK LICENSEE: The name and address of the trademark licensee. The indication that he or she has been permitted to enter the opposition
• OPPOSITION FILED BY A SUCCESSOR TO THE REGISTERED TRADEMARK OWNER: The name and address of the successor. The indication of the date on which the application for registration of the new proprietor was received by the appropriate office or where this information is not available, was given/sent to the appropriate office;
• OPPOSITION FILED BY A PARTY OUTSIDE INDIA: The name and address of the opposing party and address for service within India.

The notice of opposition must be signed by the trademark opponent/or by an authorized person who is familiar with the facts of the case. The person signing should give specific reference to the numbered paragraphs of the notice of opposition, along with the date & place where it was signed.