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Trademark Opposed –How to respond to Trademark Opposition in India?

TM opposition

When Trademark status changes to opposed –it means a third party has raised opposition against your accepted and advertised mark. Trademark oppositions can be responded within 2 months from date of receipt of official mail from registry about the opposition. The reply to notice of opposition is formally known as counter statement.

A counter statement in a trademark opposition is a formal response filed by the applicant of a trademark when their application is opposed by a third party. An opposition is a legal challenge raised by someone who believes that the registration of the applied-for trademark would infringe upon their existing rights or would otherwise be contrary to the requirements of trademark law.

When the trademark office receives an opposition against a pending trademark application, they notify the applicant about the opposition and provide them with a copy of the notice of opposition, which includes the grounds on which the opposition is based.

The applicant is then required to file a counter statement within a specified period (usually within a 2 months, from date of receipt of notice of opposition) to respond to the allegations raised by the opposing party. The counter statement is a crucial part of the opposition proceedings, as it allows the applicant to address the concerns raised by the opponent and present their arguments as to why the trademark should be registered.

A strong counter statement is must in order to lay down the foundation of successfully securing mark. A good attorney place significant emphasis over the defenses and carefully draft counter statement highlighting all the strong arguments.

Here are some essential elements to consider when preparing a counter statement:

Adhere to deadlines: Be sure to file the counter statement within the specified deadline set by the trademark office. Failure to do so may result in the application being deemed abandoned, and the opposition may be decided in favor of the opponent.

Address each ground of opposition: In the counter statement, respond to each ground of opposition raised by the opponent. Provide detailed explanations and evidence to support your arguments.

Present facts and legal arguments: Clearly present the facts and legal arguments that support your case for registration. This may include details about your use of the trademark, the distinctiveness of the mark, and any differences between your mark and the opponent’s mark.

Include supporting evidence: Where possible, include supporting evidence that substantiates your claims. This could be in the form of documents, affidavits, or declarations.

Deny false allegations: If the opponent has made any false or baseless allegations, explicitly deny them in your counter statement and provide any relevant facts or evidence to refute the allegations.

Follow the prescribed format: Adhere to the format prescribed by the trademark office for filing a counter statement. This may include specific headings, sections, or filing requirements.

Include case laws: Conclude your main contentions with appropriate case laws and thereafter carefully proofread and edit your counter statement to ensure it is free of errors and accurately represents your position.

Once the counter statement is filed, the trademark office reviews the submissions from both parties and may request additional information, evidence, or clarification. The opposition proceedings may involve further written submissions by way evidence or even multiple hearings. The final decision is made by the trademark office or the designated authority, which may result in the registration of the trademark, its refusal, or its registration subject to conditions or limitations.

In case of any advise or help required in drafting and filing of counter statement, please share your trademark application number at info@company360.in

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