In India, trademark is protected by the Trademarks Act, 1999 and it grants protection for a period of 10 years subject to renewal. Trademark registration follows certain simple procedures starting with Trademark search where you find out whether the particular brand mark or name is already used or not. It helps one to save time and money in unnecessary litigation battles. The second step is to file a trademark application to the Trademark Registry of India and get the receipt for future reference. Followed by the examination by the examiner to find out any discrepancies which may take around 12- 18 months. The examiner may then accept it unconditionally and publish it in the trademark journal or may put certain conditions to be fulfilled before such publication or object it completely from publication. Publication is an opportunity to oppose the trademark within specified time period and if any opposition comes up there will be a fair trial to decide it. Finally a trademark registration certificate is granted.
Any person whether legal or natural can file the opposition with the registry within 4 months from the date of advertisement of the trademark. Here, it is pertinent to note that it is not necessary to have any commercial interest or have a prior registered mark.
Some of the grounds for filing an opposition are:
- -The mark is devoid of any distinctive features or that it indicates any quality, quantity, time production or geographical indication;
- -The mark is likely to deceive or cause confusion in the minds of the public:
- -The mark is likely to hurt the religious sentiments of a section/ class if people or otherwise;
- -The mark is prohibited under the emblem and Names Act, 1950.1
To file the opposition, first a notice must be given within the time specified to the registry with all the necessary details and grounds for such opposition. Once, the registry accepts the notice, it will send a notice to the applicant to issue a counter statement. If it is not filed within 2 months the registry may consider the application for registration abandoned.
Within 2 months from the date of counterstatement extendable up to 1 month, the opposing party has to file all the evidences. The applicant is also given the same time period to submit any evidence in his/her favor.
The next stage is the hearing of both parties before the tribunal. The tribunal will specify the date on which both parties will be heard. After hearing, the tribunal gives its decision. The decision of the registrar can be challenged by giving an application for review or approach the Intellectual Property Appellate Board.
Though time period for each and every stage is stipulated, due to the huge backlog in number of opposition applications pending, the disposal of cases take longer period than usual. The registry however has taken few initiatives to reduce the backlog of cases such as Opposition Drive, Mediation and Reconciliation Measures and Abandonment Drive.2
Thus, opposition of trademarks registration in India is quite simple but due to the backlog in cases, it becomes a lengthy process. Any person can file the trademark opposition despite having no material interest in the trademark if the grounds as mentioned above are fulfilled.
- Opposition of a trademark and rectification of the trademark register, LEXOLOGY, (Nov 30, 2021, 5; 07 pm), https://www.lexology.com/library/detail.aspx?g=bbc7b621-19a5-44cd-9777-1da741db07a9.
- Opposition Proceedings in India, MONDAQ, (Nov 30, 2021, 5: 38), https://www.mondaq.com/advicecentre/content/3284/Opposition-Proceedings-in-India.