Documents Required
The specific documents required for trademark opposition may vary based on the case and evidence to be presented. Common documents that may be required include
- Signed evidence supporting the opposition
- Sales invoices or proof of existing use of a similar mark
- Copies of relevant advertisements
- Images of products associated with the mark
- Government registration certificates, if applicable
- Screenshots of social media accounts, if relevant
- Copies of letterheads and visiting cards
Grounds for Trademark Opposition
The following are some of the grounds on which a trademark opposition can be filed in India:
1. Similarity or Conflicting
The trademark is similar or conflicting in nature to an earlier or existing registered trademark.
2. Lack of Distinctive Character
The trademark is devoid of distinctive character, making it difficult to differentiate it from other trademarks.
3. Descriptive in nature
The trademark is purely descriptive and does not possess inherent distinctiveness.
4. Malafide Intention
The trademark registration application is made with bad faith, such as with the intention to deceive or take advantage of another’s trademark rights.
5. Likelihood of Confusion
The trademark is likely to deceive the public or cause confusion amongst public.
6. Contrary to Law:
The trademark is contrary to the law or prohibited by law.
7. Prohibited by the Emblem and Names Act, 1950
The trademark is prohibited under the Emblem and Names Act, 1950.
8. Religious Offense
The trademark contains elements likely to hurt religious sentiments or feelings of a particular class or section of people.
Opposition Notice
Trademark opposition can be filed within three months of the trademark advertisement in the Trade Marks Journal, with a possible extension of one month, by any person who has a reason to believe that the trademark applied for is same or similar to an existing trademark by filing a trademark opposition notice with the Trademark Registry.
Counter-Statement
Upon receiving the opposition notice, the trademark registrar serves a copy to the trademark applicant. The Trademark Applicant shall file a counter statement within two months of receiving the opposition Reply or else the application shall be deemed abandoned.
Hearing
After the counter statement and evidence filing stage, the registrar schedules a hearing and sends notices to both parties. The hearing takes place at least one month after the first notice and the opposition notice, counter-statement, and evidence submitted is taken into consideration for arriving at a conclusion. Non-appearance of parties may lead to ruling of the judgement against the absent party.
Appeals
The registrar makes a decision based on the evidence submitted by the both the parties. If a party is dissatisfied with the registrar’s decision, they can appeal to the Intellectual Property Appellate Board.
Trademark Opposition Outcome
If the opposition is successful, the trademark registration will be rejected. If the opposition is unsuccessful, the trademark will be registered.
Advantages of Filing a Reply to Trademark Opposition
Protection of Distinctive Mark
Our Attorneys shall reply to the trademark opposition that shall allow the trademark registrant to assert their rights and protect their distinctive mark from being challenged.
Avoiding Abandonment
a reply to the trademark opposition is not filed within two months, the trademark application may be considered abandoned, resulting in the loss of the opportunity to obtain trademark registration.