Once a trademark application is accepted for publication, it is advertised in the Trade Marks Journal. Publication opens the application to public scrutiny, and at this stage, Indian trademark law permits third parties to challenge the registration through opposition proceedings.
Trademark opposition serves as a safeguard against the registration of marks that may conflict with existing rights or violate statutory conditions.
Who Can Oppose a Trademark in India
Indian trademark law allows any person to oppose the registration of a trademark after it is published in the Trade Marks Journal. The person filing the opposition, commonly referred to as the opponent, is not required to have a trademark application or registration in India in order to oppose a mark.
Opposition Period
A notice of opposition must be filed within four months from the date on which the trademark is published, advertised, or re-advertised in the Trade Marks Journal. If no opposition is filed within this period, the application ordinarily proceeds towards registration.
Grounds for Trademark Opposition
A trademark may be opposed on several grounds, depending on the facts and circumstances of the case. Common grounds include:
- Absolute grounds, where the mark lacks distinctiveness or is not capable of distinguishing the applicant’s goods or services from those of others, as provided under Section 9 of the Trade Marks Act, 1999.
- Relative grounds, where the mark is identical or confusingly similar to an earlier trademark, including similarity in visual, phonetic, or conceptual aspects, as recognised under Section 11 of the Act.
- Other legally relevant grounds, which may arise from prior rights such as well-known trademarks, copyright, geographical indications, or other statutory protections.
Procedure After Filing a Notice of Opposition
Once a notice of opposition is filed, the Registrar ordinarily serves a copy of the notice on the applicant of the trademark within three months from the date of receipt.
Upon receipt of the notice of opposition, the applicant is required to file a counter statement addressing the allegations raised. This counter statement must be filed within two months of receiving the notice of opposition.
Failure to file the counter statement within the stipulated period results in the trademark application being deemed abandoned for non-prosecution under Section 21(2) of the Trade Marks Act, 1999.
The Trade Marks Rules, 2017 also provide mechanisms intended to facilitate faster filing of counter statements, where applicable.
Evidence Stage
Where a counter statement is filed, the opposition proceeds to the evidence stage.
- The Registrar ordinarily serves a copy of the counter statement on the opponent within two months of receipt.
- The opponent is required to file its evidence in support of opposition, or a letter of reliance, within two months of receiving the counter statement.
- Thereafter, the applicant may file its evidence in support of the application, or a letter of reliance, within two months of receiving the opponent’s evidence.
- The opponent may then file a rejoinder affidavit, if any, within one month of receiving the applicant’s evidence.
Each stage requires service of documents on the opposing party.
Hearing Stage
After completion of the evidence stage, the matter is listed for hearing before the Trade Marks Registry. Both parties are ordinarily notified of the hearing date one month in advance.
Following the hearing and consideration of the evidence on record, the Registrar passes an order determining whether the trademark should proceed to registration or be refused.
Remedies Against Opposition Orders
An order passed by the Registrar in opposition proceedings may be challenged by:
- filing a review application before the Registrar within one month, extendable by a further period of one month if permitted; or
- filing an appeal before the jurisdictional High Court within three months from the date of communication of the order.
Conclusion
Trademark opposition proceedings form an important part of the registration framework in India, allowing third parties to raise objections before a mark is granted statutory protection. Given the defined timelines and multiple stages involved, opposition proceedings play a decisive role in determining whether a trademark ultimately proceeds to registration.