During the trademark registration procedure in India, a refusal provision can be brought against the registration of any trademark in two situations:
First instance – Objection and refusal from the Indian Trade Marks Registry
Second instance – Opposition from the third party after publication in the Trademark Journal.
The Learned Examiner while examining the application mostly raises objections under Section 9 and Section 11 of the Trade Marks Act,1999. Section 9 relates to the distinctiveness of a trademark and Section 11 deals with conflicting trademark issues.
Trademark Opposition Procedure
Once the Learned Examiner of the Trade Marks Registry allows for registration, the trademark is published in the Trademark Journal. Thereafter, it is open for opposition from any third party who may be affected by the registration of such a trademark in India. The period of opposition is 4 months from the date of publication of the trademark. A trademark is published in the Trademark Journal so that anyone may object against the registration of a trademark. It is a legal challenge in the trademark registration process.
After filing the opposition, the status of the trademark application appears as Opposed in the records of the Trade Marks Registry.
Timeline for filing an Opposition
The Notice of Opposition against any published trademark in India is 4 months from the date of publication in the Trademark Journal. The application for Opposition should be filed with the Govt. Fees within the specified period. There is no provision for an extension of the time limit.
Who can file a Trademark Opposition?
According to Section 21 of the Trade Marks Act of 1999, “any person” can file an application for opposition before the Trade Marks Registry of India. “Any person” can be an individual, incorporated body, partnership firm or any trust. There can be multiple applications for Opposition. But each application is dealt with individually.
Generally, an applicant for trademark opposition can be:
· The owner of a trademark that is in prior use and where the advertised trademark is conflicting in nature. It can be visually and phonetically conflicting.
· The owner of any pre-existing trademark. When the goods and services are similar to the advertised trademark.
Grounds for Trademark Opposition
After the advertisement of any trademark in the Trade Marks journal. An application for opposition can be filed before the Registrar of Trade Marks, India within 4 months on the following grounds:
· The trademark is confusingly similar or identical to a trademark registered before.
· There is a descriptive quality to the mark.
· The mark has a descriptive quality to it.
· The trademark application is made in mala fide intention.
· The mark is common in today’s language or in established practices of the business.
· The trademark is likely to deceive the public or cause confusion.
· The trademark is illegal or is prohibited by law.
· The Emblem and Names Act of 1950 prohibits the use of the trademark.
· The mark contains material that could offend the religious sentiments of any class or group of persons.
Where can the Notice of Opposition be filed?
During the trademark registration in India, a third party may wish to oppose the trademark. The Notice of such Opposition should be filed before an appropriate branch office of the Trade Marks Registry. The Opposition should be in the same office where the trademark application has been filed. For Example, If the trademark application has been filed at the Mumbai office of Trade Mark Registry, the Opposition must be filed at the same office.
Procedure for filing Trademark Opposition
During the trademark registration procedure in India, anyone can oppose a trademark. The Opposition can be filed if a mark is deceptively similar in nature to the opposing trademark. The Trademark Opposition procedure follows the various stages, such as:
•Filing of Notice of Opposition – Anyone can file an application for the opposition of a trade mark. The same should be filed within 4 months from the date of publication of the trademark in the Trademark journal. The application should be filed before the Trade Marks Registry of appropriate jurisdiction. The third-party will be referred to as the Opponent in the process.
• Filing of Counter-Statement – The applicant should file the submission against the notice of Opposition. It must be filed within 2 months from the date of receiving the notice of opposition. If not submitted on time, the application for registration will be abandoned by the Registrar of Trade Marks. There is no provision for extension of time in the Indian Trade Marks Act, 1999.
• Evidence in Support of Opposition – The opponent should file evidence in support of the opposition in the form of an affidavit. The same must be done within 3 months after the applicant submits the counter statement. The Opponent may also write to the Registrar by not filing for any Evidence and solely relying on the statements made in the Notice of Opposition.
• Evidence in Support of Application – The applicant after receiving evidence from the opponent can file an affidavit. The affidavit has to come with evidence supporting the application. The same must be filed within 2 months (maybe extended to one month).
• Reply Evidence: The Opponent can file extra evidence to counter the evidence of the Applicant within 1 month(maybe extended to one month).
Trademark Opposition Hearing
After completion of all procedures, the Registrar will serve the notice for hearing for trademark opposition. The applicant and the opponent may appear at the hearing. Both parties can appear personally or through an attorney. Both the parties should intimate the Registrar about the participation. The intimation from both parties should reach the Trade Marks Registry within 14 days after receiving the notice. On hearing both sides, the Registrar decides the trademark opposition case and passes the appropriate order.
The trademark application is registered if the opposition proceeding is dismissed. Thereafter, the trademark registration certificate is issued accordingly.
If the opposition proceeding is valid and the trademark application is refused. The trademark will not be registered and no registration certificate will be issued.
The trademark opposition procedure ensures the non-registration of any deceptively similar trademark. Thus, the opposition procedure prevents the possibility of deception or confusion in business. It is important for the prior user to be alert against any deceptively similar trademark. For this, the help of an Intellectual Property Attorney is essential.