Trademark Opposition

Once the Registrar approves the trademark application, the trademark will be published in the journal. This is when third parties can object. If third parties have an objection regarding the registration of a trademark, they can file an objection within four months of advertising the trademark. This is called trademark opposition. Opposition against a registered trademark can be filed by any one – individuals, companies, partnership firms, trusts etc. An interesting aspect of Trademark opposition is that it is not mandatory for the person filing opposition to have any sort of commercial interest. Neither is it required of that person to have a registered trademark in the Registry. Basically, anyone can raise opposition if they feel like the trademark can leave the public confused. Trademark opposition actually helps the Trademark owner a great deal. It offers the TM owner the opportunity to eliminate any sort of confusion that might surface later. The TM owner can make sure that his/her trademark is absolutely unique.

There are certain grounds on which the third parties can raise objection. They are as follows:

- If the trademark is similar or identical to an earlier or existing registered trademark.
- If the mark is descriptive or is devoid of any distinctive character.
- The trademark is likely to deceive the public or cause confusion.
- If the mark is prohibited under the Emblem and Names Act, 1950
- The mark contains matters that are likely to hurt anyone’s religious sentiments

FILING TRADEMARK OPPOSITION

Stage 1: Filing Notice of Opposition

A notice of opposition needs to be filed with the Registry, specifying details of the opposed application, details of the opposing party and reason for opposition. It is to be noted that the opposition needs to be filed within 4 months of advertising the trademark. If the Registry finds out the opposition to be convincing, a copy of the opposition will be served to the trademark owner.

Stage 2: Filing evidence

The TM owner is expected to file counterstatement within 2 months from the date of receipt of the notice from the Registry. If not, the Registry has the authority to declare the trademark application abandoned.

Stage 3: Hearing of the Parties

Once the evidence is filed, the Registry conveys a hearing date to the TM owner and opponent to raise their arguments. The notice of the hearing will be served to both parties 30 days prior to the first hearing. The willingness to attend the hearing needs to be notified to the Registrar within 14 days from the receipt of the invitation. After the hearing, the Registrar will decide if the trademark is eligible for registration.

DOCUMENTS REQUIRED TO FILE TRADEMARK OPPOSITION

Details of the Applicant: Applicant’s name, address, nationality and other information

Affidavit: Affidavit with the basic information about the trademark

Details of the opposed trademark: Specifics of the trademark; grounds on which the opposition is made.

RECTIFICATION OF TRADEMARK REGISTER

There may be trademarks that got registered, but not used for quite a long while. ‘Rectification’ can be resorted to in such instances. Through rectification, a registered trademark which is not used within 5 years from the date of its registration can be removed. However, rectification can be filed only by a person who has solid interest or a person who would be considerably damaged if the mark remained in the Register.