Reasons to Oppose a Trademark and How to Respond to Opposition in India

Common Grounds for Opposing a Trademark:

• The trademark is identical or confusingly similar to an existing registered or pending trademark.

• The trademark lacks distinctiveness and fails to differentiate the goods/services.

• The trademark is purely descriptive or self-explanatory.

• The application is made in bad faith or with dishonest intent.

• The trademark consists of common words or terms used widely in everyday language or business.

• The trademark is likely to mislead or confuse the public about the origin of the goods/services.

• The trademark is illegal or prohibited under Indian law, including the Emblems and Names Act of 1950.

• The trademark contains offensive material that hurts religious or cultural sentiments.

Where to File a Trademark Opposition in India?

The opposition notice must be filed at the Trademark Registry office where the conflicting trademark application was originally submitted. For example, if the application was filed with the Delhi Registry, the opposition must also be filed in Delhi.

What to Do If Your Trademark Status Shows “Opposed”?

If your trademark application is opposed, you must prepare and submit a counter-statement addressing the opposition within four months from the date of advertisement in the Trademark Journal. This period includes an initial three months plus a possible one-month extension.

It is strongly recommended to engage a trademark professional to draft a clear and effective rebuttal. Failure to respond within the stipulated timeframe will result in your application being considered abandoned.

How to Submit an Objection to a Trademark in India

When opposing a trademark application, the following key details and formalities must be addressed to ensure your objection is valid and properly recorded:

1. Details of the Trademark Application Under Opposition

• Application Number: Specify the exact number of the trademark application you are opposing.

• Goods or Services Description: Provide a clear description of the goods or services covered under the trademark application.

• Applicant’s Name: Include the full name of the individual or entity who applied for the trademark.

2. Information on Prior Mark or Right Supporting the Objection

• Prior Trademark Application or Registration: If your objection is based on an existing trademark, include its application or registration number.

• Well-Known Trademark: For objections related to well-known trademarks, specify the country or region where the mark is recognized as well-known.

3. Details of the Opposing Party

• Owner’s Name and Address: When the objection is filed by the owner of an earlier trademark, include their full name and address.

• Ownership Confirmation: Provide a statement confirming ownership of the trademark or right being relied upon.

• Successor in Title: If the objection is filed by a successor who is not yet registered as the proprietor, include their name, address, and the date the application for registration was received.

• Foreign Opponent: If the opposing party does not have a business presence in India, provide their name and an Indian address for service.

4. Filing the TM-5 Form

• The opposition must be formally submitted by filing the TM-5 form at the relevant trademark office.

• The TM-5 form should include:

  • The trademark application number and details of the goods or services.

  • The name and address of the applicant whose trademark is opposed.

  • The name, address, and evidence of ownership for the opposing party filing the objection.

Following these steps carefully ensures your trademark opposition is properly submitted and processed under Indian trademark law.

Trademark Opposition Time Limit in India

Once a trademark is published in the Trade Marks Journal, any individual or entity has the right to oppose its registration within a specified timeframe:

• Standard Period: Opposition can be filed within 3 months from the date of publication.

• Extension: The Registrar may grant an extension of 1 additional month, making the total opposition period up to 4 months.

Important Points to Note

• Filing Venue: Trademark opposition applications must be submitted directly to the Trademark Registrar’s office where the trademark application was originally filed.

• No Direct Court Appeal: Opposition cannot be filed directly with the Courts or the Intellectual Property Appellate Board (IPAB) at this stage.

Outcome of Trademark Opposition

• If Opposition is Upheld: The trademark application will be rejected, and registration will not be granted.

• If Opposition is Dismissed: The trademark application will proceed to registration, and the applicant will be issued a registration certificate.

Procedure for Trademark Opposition in India

1. Opposition Notice
Any individual or entity may file a formal notice of opposition against a trademark published in the Trade Marks Journal within 4 months from the date of its initial publication.

• The opposition must be filed using Trademark Form 5.

• The prescribed fee must be paid along with the filing.

2. Counter-Statement
Once the opposition notice is filed, the Trademark Registrar provides a copy of the notice to the trademark applicant.

• The applicant must submit a counter-statement within 2 months of receiving the opposition notice.

• Failure to submit this counter-statement within the stipulated time will result in the abandonment of the trademark application.

3. Hearing
After both parties submit their evidence, the Registrar will schedule a hearing date.

• The hearing date is communicated to both parties at least 1 month in advance.

• The hearing considers the opposition notice, counter-statement, and evidence submitted.

• The Registrar presides over the hearing.

• If either party fails to attend, the Registrar may pass a decision against the absent party.

4. Appeals
Based on the hearing and submitted evidence, the Registrar decides whether the opposition is valid and whether the trademark should be registered or refused.

• If dissatisfied with the Registrar’s decision, any party may appeal to the Intellectual Property Appellate Board (IPAB).

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