Trademark Hearing types and evidences

In recent days due to the technological development, all IPR processes including trademark filing is carried out in online portals. All Trademark search, filings, scrutinization, trademark registration and certification whatsoever are available on online Government portal; however the Trademark hearing part still may be attended ‘in person’ rule, due to various reasons.

The hearing stands mandatory when the question arises regarding the credibility and acceptability of the trademark. Usually it happens after the filing the application i.e Show cause Hearing and when the trademark has been opposed i.e Opposition hearing.

##Types of Hearing

  • Show cause hearing: Once the application has been filed before the Trademark Registry for the registration of the trademark, the registry will scrutinize the application and trademark in relation to the well established trademark rules and principles. Generally in relation to sec.9, Sec.11 and sec.18 of the Trademarks act, 1999. Once the registry done with the scrutiny, the examination report will be published and incase our trademark has passed the test it will directly published in the trademark journal and the status will be ‘Accepted and advertised’ and in case it still remains objected i.e where the Examiner is still not convinced with the reply, the status of the application remains as Trademark objected
    . In such circumstance, we also need to appear for the show cause hearing through an IPR attorney/Lawyer. In the hearing, we have to express our arguments in support of registration once we convinced the registrar, the trademark will go with further procedure namely accepted and advertised or else it stands rejected. On failing to appear for hearing the mark will be abandoned.

  • Opposition Hearing: Once the trademark has accepted by the registry and it will be published in the trademark journal, after which the opposition period of 4 months begins. During the opposition period, the opposition to the registration of the trademark is welcomed. In case any other interested person raised an opposition by way of filing a notice of opposition, we have to give counter statement to that which we have explained earlier in our post. Then the opponents have to produce evidences in support of opposition and we have counter with our evidences in support of application. After these stages the hearing of opposition will commence, where the registrar will hear both the parties and will order on merits.

  • Rectification Hearing: Even after the registration of Trademark the interested can file rectification in order to remove a registered trademark from the registry. In such case, the same pattern of opposition follows and after completion of evidence stage, rectification hearing takes place.

###Evidences: Applicable in case of Hearings

As far IPR concern, Novelty places a vital role i.e Newness. In Trademark it comes under the umbrella of Prior user, the prior user will always have the upper hand on the any trademark, hence the parties requires to produce various evidences in order to prove the usage of such trademarks by them and have gained various reputation and goodwill. So in order to prove the same, the party has to produce the following documents/evidences which should contain the trace of Trademark,

  • *Invoices
  • *Bills
  • *Company Incorporation Certificates/Partnership deed, etc.
  • *Government licenses, etc.
  • *Agreements entered
  • *Advertisement (Bills, posters, newspaper cuttings, etc.)
  • *Assignment/License deed if any.
  • *Any other proofs expressing the brand/trademark have been used by the person/company.