What is Trademark opposition ?
When the applied trademark is advertised in Trade Marks Journal, then within a period of 4 months the accepted and advertised trade mark can be opposed by a third party. A third party generally files an opposition when there is a similar trademark published in the Journal or if the trade mark is alleged to be a non-distinctive trade mark.
This opposition proceeding can be initiated only before the Registrar and cannot be directly taken either to the Court or the Appellate Board, and anyone can oppose the advertised Trademark.
HOW CAN YOU CHECK WHEATHER A TRADEMARK IS OPPOSED OR NOT?
A person can check whether a trademark is opposed or not; by seeing the status of the trademark on the Indian trademark registry as whenever any 3rd Party gives the notice of opposition within the 4 months of trademark advertisement than the status of that trademark changes from Advertised to Opposed.
Now what to do when you see your Trademark is opposed?- You need to reply to the Trademark Opposition within 2 months from actual service of Trademark opposition notice (either by mail or physical copy)
###Stage 1: Filing a Notice of Opposition /Filing of a Counter-Statement
Any person can oppose a trademark by filing a Notice of Opposition by Form TM-O along with the prescribed fee within the four months of post publication of the mark the Trademarks Journal. A Notice of Opposition consists of the application against which opposition is sought and the grounds for opposing the mark. The opposition is initially sent to the Registry for review and if all the requirements are fulfilled, then the Registry serves the Notice upon the other party.
A reply or counter statement must be filed by the applicant within two months of receipt of the notice of opposition (You can calculate the time for filing the counter statement by two ways basically either from the date on which you receive the receipt of notice from the registrar of Trademark or on the basis of the electronic copy made available on the website of Trademarks Registry) by way of Form TM-O along with the prescribe fees. There is no fixed fee for filing a counter statement, it is basically determined with respect to the class to which the goods or services are related.
The counter statement shall consist of the following:
Firstly, the facts should be stated, also if any facts is alleged in the notice of opposition are admitted by the applicant.
Secondly, paragraph wise counter of each and every grounds made in the notice of the opposition.
The counter statement shall be verified by the opponent or by his authorized agent who shall state that after referring to the specific paragraphs of the notice of opposition, also what he verifies of his knowledge and what he verifies upon information is believed to be true.
The verification shall be signed by the person making it and shall state the date as well as the place at which it was signed.
Then, the registrar after reviewing that all the requirements are being adhered, he will serve a copy of the counter-statement on the opponent within two months from the date of receipt.
Note:- There is no extension to file a counter-statement which means that if the party fails to file a counter-statement within a period of 2 months after receiving the Notice, it shall be presumed that the trademark application is abandoned.
###Stage 2: Filing of Evidence**
Rule 45 – Evidence in support of the Opposition:
The opponent may provide evidence in support of his opposition in the form of an Affidavit to strengthen the case within a period of two months from the date of receipt of the counter statement. (Time period can be calculated in the same way as stated above) Although, the opponent can choose to waive filing such an Affidavit under Rule 45, if he wants to rely upon the Notice of Opposition filed by him. In such cases, it must be informed to the Officials of the Trademarks Registry and the parties within the prescribed time otherwise the opposition will be treated as abandoned.
Rule 46 – Evidence in support of the Application:
The applicant should produce evidence in support of his application within two months of receiving the Rule 45 evidence filed by the opponent. The applicant also has an option of relying on the counter- statement rather than submitting any evidence under Rule 46.
Rule 47 – Evidence in Reply:
The opponent again has an option to produce additional evidence in support of his opposition within one month of receiving the Rule 46 evidence of waiver by the applicant, if any. This provision is provided to achieve conclusiveness in the proceedings and to deny the evidence produced by applicant and finally rest their case.
###Stage 3: Hearing
After, filing of evidences the registrar will give notice to the parties about the first date of hearing which shall be at least 1 month after the date of notice.
Although, a request for the adjournment can be made, at least 3 days before the hearing date. (Under the Form TM-M). Whereas, a maximum number of adjournments which can be requested by a party is restricted up to 2 times and the duration of each of such adjournment is restricted to not more than 30 days.
The Registrar after hearing both the parties and by examining the evidences will decide that whether the trademark shall be registered or not and then will finally bring the opposition proceeding to an end.
If any of the parties does not appear on the date of hearing or adjourned date of hearing, the registrar may dismiss the application if the defaulting party is applicant, or may dismiss the opposition if the defaulting party is opponent.
However, the aggrieved party may appeal to the Registrar’s decision by filing an appeal before the Intellectual Property Appellate Board.
This article explains very briefly, the process and timelines of Trademark opposition in India, how to file evidences and other technical details will be dealt in next article.