Trademark Opposition
A trademark opposition is a legal challenge to the right to register a particular trademark. A trademark opposition is instituted by filing a notice of Opposition with the Trademark Trial and Appeal Board and paying the required Trademark Opposition fee. The notice of Opposition must be filed within three months of the date the trademark application is published for Opposition unless a request for an extension of time to oppose is filed with the Board (which is usually instantaneously granted).
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Trademark Opposition in India – An Overview
Before diving into the procedure of trademark opposition proceeding in India, a quick run-through of the general procedure of trademark filing until registration would be helpful. Once a trademark application is filed, the Registry examines the application to determine the distinctiveness of the mark. If the examiner is satisfied that the mark is distinctive and that there are no similar marks already existing in the Trade Register, then the mark is accepted and published in the Trademarks Journal. Post such publication, the mark is open for opposition by third parties for a period of 4 months. The party who files the application is referred to as the Applicant.
Reasons behind the opposition of a trademark
The opposition of a trademark can be attributed to various reasons, which can be categorized into two types:
Absolute Grounds
The absolute grounds for opposition arise due to explicit violations of trademark regulations, and include the following reasons:
Descriptiveness: If your brand name falsely implies a geographical location to which it does not belong, it may face opposition.
Genericness: Your brand name should not include generic terms.
Similarity: This is the most common reason for trademark opposition, where your trademark is an exact replica of an existing brand.
Bad faith and fraud: If a third party believes that you have applied for trademark registration in bad faith, they may file an opposition notice.
The absolute grounds for opposition apply when your brand name is identical to an existing trademark.
Relative Grounds
The relative grounds for trademark opposition arise when someone opposes your brand name on a priority basis. The reasons are as follows:
If someone has opposed your mark based on priority usage.
Your trademark intends to harm an existing brand name.
Your trademark is similar to a registered business or domain name.
Your trademark is deceptively similar to a well-known brand name, regardless of whether the latter has a trademark registration certificate.
The relative grounds for opposition apply when your brand name is deceptively similar to an existing mark.
What is the trademark opposition process?
The trademark opposition process involves the following steps:
- Notice of Opposition: The opponent files a notice of opposition with the Trademark Registrar, either by themselves or through a trademark attorney.
- Counter Statement Filing: The trademark applicant then has two months to file a counter statement in response to the notice of opposition. Failure to file a counter statement will result in abandonment of the application.
- Evidence Filing (Opponent): The opponent has two months to submit evidence to support their opposition. If they cannot do so in that time, they may be granted an extra month by the Registrar.
- Evidence Filing (Applicant): Within two months of receiving the opponent’s evidence, the applicant must file their own counter-evidence to support their claim to the trademark. If they cannot do so in time, they may be granted an extra month by the Registrar.
- Analysis and Hearing: The trademark registrar will conduct a hearing after receiving evidence from both parties. The Registrar will then consider the evidence presented and make a final decision.
Documents Required
Initially, you have to provide us with the following details:
Applicant’s name
Business type
Business objectives
Brand/logo/slogan name
Registration address
The documents required are:
Signed Form-48
Identification proof of the signatory
Address proof of the signatory
Business proof (depends on the type of business)
Udyog Aadhar/MSME registration certificate (optional).