Trademark Opposition: Meaning and Application

The trademark will be published in the Trademarks Journal after the examination of our trademark has been completed and it has been determined that our trademark meets the requirements for registration. The publication of a trademark in the Journal serves the goal of providing any interested third party with the opportunity to inspect the trademark and submit an objection to the registration of the trademark. To put it another way, an opposition to a trademark registration is anything that a third party files against the registration of someone’s trademark.

As soon as a challenger submits an opposition to your trademark application, the status of the application will change to "Opposed."

Objections to Trademarks and Their Grounds

One may file an objection to a trademark on the basis of a number of different trademark opposition grounds, including −

• In the event that it was discovered that the trademark was like to or identical to an earlier or already registered trademark;

• In the event that the trademark does not have any characteristics that distinguish it from other brands or has a nature that is descriptive;

• It is possible for the public to be misled by the trademark or for it to lead to misunderstanding among the public;

• In the event that the trademark is of usual use in the present language or if it falls within the bounds of the conventional procedures for doing business;

• In the event that the trademark mark is found to be in violation of the legislation governing trademarks or is deemed illegal under the Emblem and Names Act of 1950;

• The trademark that may include content that is likely to offend the religious sensibilities of any particular group or category of persons.

Advantages of Trademark Opposition

• Beneficial Remedy for TM Proprietor: Trademark opposition develops into an effective instrument for preventing other trademark owners from continuing to use identical marks, which may hamper or weaken the image of their brand or logo or may create confusion in markets dealing with the same sorts of products.

• Consultation with the Public Seeing: as how trademark brands are developed on the basis of public popularity and demand, it is obligatory to first consult with the public prior to requesting trademark permission for a trademark that has been filed for and is looking to register.

Required Paperwork for Submitting an Opposition to a Trademark

The following is a list of the documentation that must be submitted together with the trademark opposition application −

• Details of the applicant include their full names, addresses, nationalities, and any other relevant information.

• Power of Authorization (POA): A power of authorization grants permission to an attorney or a trademark agency to submit an objection to a trademark application on behalf of the applicant.

• Affidavit: An affidavit that includes the fundamental information that is necessary in relation to the trademark, including its initial use date and any proof of use or evidence.

• Specifics about the contested mark, in addition to a rundown of all of the feasible causes for opposition: information pertaining to the trademark that is the subject of the objection that must be lodged, including every conceivable justification for lodging the opposition. the opposition must be lodged.

The Process of Opposing to a Trademark Consists of Multiple Stages

Stage 1: consists of either submitting a notice of opposition or a statement of opposition. Anyone may file a Notice of Opposition as long as they do so within four months of the publication date in the TM Journal and include the required fees and documents. After the objection notice has been filed at the Trademark Registry, the Registrar will examine it to ensure that it satisfies the formality criteria, and then the Registrar will issue the opposition notice to the applicant.

Stage 2: The Submission of a Rebuttal Statement. Within two months after receiving the notice of objection, you are expected to submit either a counter-statement or a reply to the opposition. There is no provision for an extension to file a counter-statement made by the TM Registry, and it is made abundantly clear that if the Trademark applicant fails to submit a counter-statement within two (02) months of the issuance of the Notice of opposition, the mark will be deemed to have been abandoned. There is no provision for an extension to file a counter-statement made by the TM Registry.

Stage 3: The presentation of evidence in favour of the opposition. The opponent is required to provide evidences in support of the Notice of Opposition in affidavit form in order to strengthen the case within two (02) months, which may further be extended by one (01) month, after receiving the counter-statement. This deadline may further be extended by one (01) month. If the opponent prefers to depend on the facts that are provided in the Notice of Opposition, then the opponent has the option of forgoing the need to file an affidavit. Regardless of the course of action the opponent decides to pursue, they are required to tell both the Trademark Registry and the applicant within the given time. In the event that he or she does not notify the same, the opposition proceedings will be considered to have been dropped.

Stage 4: The Presentation of Evidence in Support of the Counter-Statement.

Within two months after receiving proof or information about waiver from the opponent, the applicant has to provide evidence in support of his or her filed counter-statement or application. This is to be done within the time frame of two months. In this situation, the Applicant also has the option of waiving any right he may have to present any proof.

Stage 5: The Submission of Evidence in Response. The opposing party has another opportunity to provide further evidence(s) in support of his or her objection provided that it is done within one (1) month after the issue of evidence or the receipt of a waiver. This alternative is to obtain some form of clarity in the processes, for the purpose of establishing rebuttal to the evidence or evidences that were provided by Applicant.

Stage 6: Hearing and Listening. Within three (03) months following the completion of the evidences, a hearing is scheduled, and both the parties, namely the applicant and the opponent, are notified of the decision. The decision about whether or not the trademark should be accepted is made by the TM Registrar after listening to all sides of the dispute and giving careful consideration to the facts presented. Nevertheless, in situations in which either party—the opponent or the applicant—is dissatisfied with the Registrar's decision, they have the ability to contest that decision and have the option to submit an appeal with the Intellectual Property Appellate Board (IPAB).

Notice of Opposition on the Basis of a Transnational Reputation

Under the heading "Trans-border Reputation," Section 35 of the Indian Trade Marks Act, which was passed in 1999, has a clause that allows for the protection of foreign trademarks on the basis of their reputation on an international scale. The Indian Trade Marks Law recognizes internationally renowned foreign brands and the goods they produce. These brands and marks are afforded legal protection in India against identical and similar marks, and the owners of marks associated with these foreign brands are afforded legal protection in India regardless of whether or not they use their marks on goods or services in India or register their marks there.

The goodwill that is gained by the maker is not necessarily restricted to the nation in which the items are freely accessible. This is due to the fact that the goods, even if they are not available, are extensively publicized in periodicals, journals, and other forms of media.

The end effect is that despite the fact that the items are unavailable in the nation, both the goods themselves and the mark under which they are offered end up gaining a significant amount of notoriety. The following cases are examples of legal precedents that were established by important decisions in India:

• N.R. Dongre and Others vs. Whirlpool Corporation and Others in 1996;

• Indian Shaving Products Ltd. and Others vs. Gift Pack and Others in 1998; and

• Milmet Oftho Industries and Others v. Allergan Inc. in 2004.

Conclusion

The law governing trademarks in India includes provisions for trademark opposition, which is a procedure that is both efficient and effective for preventing or withdrawing the award of marks that are not eligible for protection. However, as a result of this availability of opposition processes, the Indian Trademark Registry is now experiencing a backlog of trademark prosecutions. The oppositions can cause a delay in the procedure via which the marks are granted.

The use of trademark opposition may assist competitors in protecting their own logos and marks. The Indian Trademark law has measures to combat such unfair usage, such as to combat the use of marks that are confusingly similar to one another. The owner or applicant of the mark that is deceptively similar to another might make an attempt to capitalise on the considerable goodwill and reputation that the competitor has established. In the event that the request is granted, the mark will be registered as a registered mark in India; nevertheless, the applicant of deceptively similar trademarks may not be able to defend their brand in India when the registration is complete. Because of this, our proposal is that you submit a "NOTICE OF OPPOSITION" in order to safeguard the applicant's reputation and the goodwill that has been established as a result of the applicant's mark.

FAQs

Q1. When does the deadline for submitting the Notice of Opposition need to be met?

Ans. After the Trade Marks Journal is made accessible to the general public, the period of time during which an objection notice may be submitted is three months, with an additional one month possible for extension (3+1). If the notice of opposition is filed after three months but before the expiration of four months, then it must be accompanied by a request for an extension of time for one month, giving sufficient reasons for the delay in filing the opposition. If the request is granted, then the opposition must be filed before the expiration of five months.

Q2. At the time that I file the Notice of Opposition, do I need to also submit a Power of Attorney?

Ans. When submitting a notice of objection, a power of attorney is often required to be included along with the paperwork. It is possible to reschedule the filing of the objection at a later time if the Power of Attorney is not accessible when the opposition is first submitted.

Q3. Would it be possible for me to file an opposition based on my pending application and use?

Ans. Yes, the objection may be filed on the basis of the pending application or usage. The Trade Marks Act of 1999 acknowledges rights derived from common law.