29 Apr 2020

Trademark Opposition System in India: Grounds, Provisions and Procedure at Indian Patent Office (IPO)

Introduction

Once a trademark application is filed at Trademark Registry, it is examined by the Trademark Registrar with respect to distinctiveness of an applied mark. If the Trademark Registrar gets satisfied about the distinct nature of the applied mark and feels that there are no existing similar mark(s) in the register of Trademarks, then the applied mark is published into the Trademark Journal.

The published Trademark is opened for public inspection/opposition by third parties for a period of 04 months. In matters where no opposition is filed during this period, the mark gets registered. In another situation, where oppositions are filed, then the opposition proceedings are initiated and decision of the applied mark depends upon on the outcome of the opposition proceedings at the Trademark Registry.

Time duration for Filing Notice of Trademark Opposition

The notice of opposition may be filed within 03 months from the date of publication of a trademark in the Trademark Journal which is further extendable by 01 month (3+1). The time duration is not extendable under any circumstance. In matters where the notice of opposition gets filed after 03 months but before the expiry of 4th month, then it should be accompanied by a request for an extension by 01 month along with one or more suitable reasons for such delay in filing the opposition.

Who can file a Trademark Opposition?

Under Section 21 of Trade Mark Act, “Any person” who is having thinking that his/ her brand name/logo or reputation of a company could be damaged if the trademark application gets registered. He / She could opt to oppose such registration by filing a Notice of Opposition by prescribed form along with requisite fee.

There is no restriction on who may file an opposition. Anyone who is having an opinion that the published trademark application may create confusion among the public as having similar goods, may file for the opposition and wait for further trademark proceedings.

The opponent does not mandatorily have to be a registered proprietor of a trademark. He / She could be either a purchaser, customer or a member of the public likely to use the similar goods. The logic behind this opposition provision is that the opponent is not only representing himself / herself but also represents public because having two similar marks in the market dealing with same goods may result unnecessary confusion amongst the public. 

Grounds of trademark opposition

There are various grounds of Trademark Opposition on the basis of which one can file trademark opposition:

  • In case the trademark found similar or identical to an earlier or existing registered trademark;
  • In case the trademark is devoid of any distinctive character or descriptive in nature;
  • The trademark gets likely to deceive the public or cause confusion among the public;
  • In case the trade mark is of customary in the current language, or it comes under the established practices of business;
  • In case, the trademark mark becomes contrary to the trademark law or gets prohibited under the Emblem and Names Act, 1950;
  • The trademark mark that may contain subject matter which is likely to hurt religious sentiments of any class or section of people 

Advantages of Trademark Opposition

  1. Beneficial Remedy for TM proprietor: Trademark opposition becomes an efficient tool in stopping other trademark owners to continue similar marks as it may hinder/dilute their brand/logo image or may cause confusion in the market dealing with same kinds of goods.
  2. Public Consultation: As the trademark brands are created on the basis of public popularity and demand, it is mandatory to first consult the public before trademark approval regarding trademark applied and seeking for registration. 

Documents required to file a Trademark Opposition

The documents which are required at the time of filing Trademark Opposition are as under:

  • Applicant’s details: Full name, Address, Nationality etc. details of the applicant.
  • Power of Authorization (POA): POA allows the attorney or a trademark agent to file the trademark opposition on the behalf of the applicant.
  • Affidavit: Affidavit with the basic required information related with the trademark and its first usage date and proof of use/evidences.
  • Details regarding the opposed mark along with all possible grounds of oppositions: Detailed information related to the trademark against which the trademark opposition needs to be filed, e. all possible grounds for filing the opposition.

Different Stages in Trademark Opposition Proceedings

Stage 1 – Filing a Notice of Opposition/Filing a Counter-Statement

Any person may submit Notice of Opposition within 04 months of publication in TM Journal along with prescribed fees and forms. Once notice of opposition is submitted at the TM Registry, it is reviewed by the Registrar for formality requirements and the registrar accordingly issues the opposition notice to the applicant.

Stage 2 – Filing of counter statement

A counter-statement or reply to the notice of opposition is required to be filed within two (02) months. There is no extension to file a counter-statement provided by the TM Registry which clearly states that in case the Trademark applicant fails to submit a counter-statement within two (02) months of issuance of the Notice of opposition, the mark will be then deemed to be abandoned.

Stage 3 – Filing of Evidence in support of Opposition

Within two (02) months which may be further extendable by one (01) month of getting the counter-statement, the opponent is required to provide evidences in support of the Notice of Opposition in Affidavit form in order to strengthen the case. Opponent may also opt to waive filing an Affidavit if he / she wishes to rely on the facts which are stated in the Notice of Opposition. Whatever maybe the option selected by the opponent, the opponent need to inform the TM Registry and the applicant within the prescribed time. In case he / she does not inform the same, the opposition proceedings would be treated as abandoned.

Stage 4 – Filing of Evidence in support of Counter- Statement

Within two (02) months of getting evidence or information regarding waiver by the opponent, the Applicant need to file evidence in support of his / her submitted counter-statement/application. The Applicant here is also having an option to waive his right to submit any evidence. 

Stage 5 – Filing of Evidence in Reply

Within one (1) month of issuance of evidence or getting waiver, the Opponent again gets the option to submit additional evidence(s) in support of his / her opposition. This option is to acquire some sort of clarity in the proceedings, for proving rebut the evidence(s) produced by Applicant.

Stage 6 – Hearing

Within three (03) months of the finishing of the evidences, a hearing gets appointed and both the parties i.e. opponent and applicant are informed. After hearing both the parties and considering the evidences in detail, the TM Registrar takes a decision whether the trademark need to be accepted or not. However, in cases where either party i.e.  Opponent or Applicant aggrieved by the Registrar’s decision could challenge the Registrar’s decision and may file an appeal before the Intellectual Property Appellate Board (IPAB).

Notice of Opposition based on Trans-Border Reputation

Section 35 of the Indian Trade Marks Act, 1999 reveals a provision for protection of foreign trademarks on the basis of their international reputation under the term “Trans-border Reputation”. Indian Trade Marks Law acknowledges internationally renowned foreign brands and their goods and such brands/marks are given protection against identical and similar marks and owners of marks of these foreign brands are granted legal protection in India, irrespective of use of goods/services or registration of marks in India. The goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods, though not available, are widely advertised in newspapers periodical, magazines, and in other Media. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation. Some legal precedents from key decisions in India are as under: N.R. Dongre And Ors vs Whirlpool Corporation And Anr 1996; Indian Shaving Products Ltd. & Anr. vs Gift Pack & Anr. 1998; Milmet Oftho Industries & Ors. v. Allergan Inc. 2004.

Conclusion

India’s Trademark law provides provisions for trademark opposition – An efficient and effective method for preventing or revoking the grant of non-eligible marks. However, this provision of opposition proceedings leads to backlog of trademark prosecutions at the Indian Trademark Registry. The oppositions also delay in the process of grant of the marks.

Trademark opposition helps opponents in securing their logos/marks. The Indian Trademark law has provisions to oppose such unfair use, e.g. to oppose the deceptively similar marks. The owner/applicant of the deceptively similar mark could try to encash the immense goodwill and reputation earned by the opponent. If allowed, the mark would be registered as a registered mark in India, and the applicant of deceptive similar trademarks may not be able to protect their brand in India after registration. Therefore, in order to protect the reputation and goodwill earned by applicant’s mark, our recommendation is to file a: NOTICE OF OPPOSITION. 

Authors

Dr. Amit Goel (Director) can be reached at amit.goel@effectualservices.com and Jyoti Chauhan (Manager). For any query related to trademark opposition system in India, please feel free to contact at info@effectualservices.com.

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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