{"id":30145,"date":"2020-04-01T19:03:35","date_gmt":"2020-04-01T13:33:35","guid":{"rendered":"https:\/\/enterslice.com\/learning\/?p=30145"},"modified":"2022-09-13T16:41:41","modified_gmt":"2022-09-13T11:11:41","slug":"trademark-opposition-grounds-stages-and-relevant-case-laws","status":"publish","type":"post","link":"https:\/\/enterslice.com\/learning\/trademark-opposition-grounds-stages-and-relevant-case-laws\/","title":{"rendered":"Trademark Opposition: Grounds, Stages and Relevant Case Laws"},"content":{"rendered":"<p class=\"has-drop-cap\">A trademark opposition is a legal claim opted by any third party to view the trademark and file a trademark opposition against it. It can be made at the time before the trademark registration and after the filing of trademark application. A trademark opposition is initiated by filing a notice of opposition with the prescribed govt. fee.&nbsp; The notice of opposition must be filed within the specified time given for the opposition to be submitted. When an opponent files an <strong><a href=\"https:\/\/enterslice.com\/trademark-opposition\">opposition of trademark<\/a><\/strong>, the trademark status will reflect as &lsquo;Opposed&rsquo;.<\/p>\n\n\n\n<h2 class=\"wp-block-heading\">Who Can File For Trademark Opposition?<\/h2>\n\n\n\n<p><strong>Any person can file the notice of opposition which includes:<\/strong><\/p>\n\n\n\n<ul><li>The owner of an earlier trademark application or\nregistration covering a similar trademark for similar goods. <\/li><li>A person who has used the same or a similar\ntrademark prior to the client, but who has not sought registration of the\ntrademark<\/li><li>Individuals, partnership firms, companies,\nLimited liability partnership, trusts or any other person whose rights are\nviolated. <\/li><\/ul>\n\n\n\n<p>Also, the two or more persons who have the same issues\nagainst a trademark can be joined together as opponents and file for the\nopposition.<\/p>\n\n\n\n<h2 class=\"wp-block-heading\">How to File Notice of Opposition Online<\/h2>\n\n\n\n<p>The notice of opposition should be in writing with all the\nrelevant details describing their mark and applicant&rsquo;s mark and also the grounds\nin what manner the applicant&rsquo;s mark is infringing their mark. The agent of the\napplicant or the applicant himself can file the notice of opposition by <\/p>\n\n\n\n<ul><li>Login to the <strong><em>IP India Online Filing of Trade\nMark<\/em><\/strong> <\/li><li>Selecting the option <strong><em>&ldquo;File TM-O&rdquo;<\/em><\/strong> by choosing <strong><em>&ldquo;New\nForm Filing&rdquo;<\/em><\/strong> <\/li><li>Then selecting <strong><em>&ldquo;Notice of Opposition&rdquo;<\/em><\/strong>\nwith the applicant&rsquo;s application number with the relevant details and attaching\nnotice of opposition along with the prescribed government fee of Rs. 2700.<\/li><\/ul>\n\n\n\n<h2 class=\"wp-block-heading\">Time Limit for Filing an Opposition<\/h2>\n\n\n\n<p>According to <strong><em>section 21 clause 1 of Trademarks Act, 1999<sup><a href=\"https:\/\/legislative.gov.in\/sites\/default\/files\/A1999-47_0.pdf\"><strong>[1]<\/strong><\/a><\/sup>,<\/em><\/strong> any person may, within <strong><em>four months<\/em><\/strong> from the date of the advertisement or re-advertisement of an application for <strong><a href=\"https:\/\/enterslice.com\/trademark-registration\">trademark registration<\/a><\/strong>, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the registrar, of opposition to the filling.<\/p>\n\n\n\n<h2 class=\"wp-block-heading\">Trademark Status Marked As &ldquo;Opposed&rdquo; <\/h2>\n\n\n\n<p>When the registrar reviews your application for trademark and finds that it qualifies for registration and has not been objected by the Trademark Examiner or if there was an objection raised by the department which has overcome, then in the next step your trademark gets published in the Trademarks Journal. The purpose behind publishing a Trademark in the Journal is to enable the public to view the trademark and submit an opposition against it. When an opponent files an opposition, the respective trademark status is marked as &lsquo;Opposed&rsquo;.<\/p>\n\n\n\n<h2 class=\"wp-block-heading\">Grounds for Filing Online Trademark Opposition<\/h2>\n\n\n\n<p>Some of the grounds on the <a class=\"glossaryLink\"  aria-describedby=\"tt\"  data-cmtooltip=\"&lt;div class=glossaryItemTitle&gt;Basis&lt;\/div&gt;&lt;div class=glossaryItemBody&gt;In finance, the &amp;quot;basis&amp;quot; is a term with several applications, including representing the difference between the spot price and the future contract price of an asset, which is vital in investment(...)&lt;\/div&gt;\"  href=\"https:\/\/enterslice.com\/learning\/terms\/basis\/\"  data-gt-translate-attributes='[{\"attribute\":\"data-cmtooltip\", \"format\":\"html\"}]'>basis<\/a> of which a person may file\nfor Opposition Proceedings are listed below:<\/p>\n\n\n\n<h2 class=\"wp-block-heading\">Stages of Trademark Opposition&nbsp; <\/h2>\n\n\n\n<p>The steps which are involved in the procedure of Trademark\nOpposition are as follows:<\/p>\n\n\n\n<p><strong>Notice of Opposition:<\/strong>\nAny person can file for notice of opposition that is published in the trademark\njournal within four months from the date of broadcast. <\/p>\n\n\n\n<p><strong>Counter-Statement:<\/strong>&nbsp; The applicant or the agent within two months\nof the acknowledgement of the notice of opposition can file for counter-statement.\nIn case the counter-statement is not filed within the prescribed time, it will\nbe deemed that the applicant has abandoned the Trademark application. <\/p>\n\n\n\n<p><strong>Hearing:<\/strong> Upon the\nnotice of opposition, counter-statement is filed with all the evidence, then,\nthe Registrar shall call the applicant for a hearing, and the matter will be\ndecided upon merits. <\/p>\n\n\n\n<p><strong>Rejection or\nRegistration:<\/strong> If the registrar decides in favor of the applicant, the\ntrademark will be registered, and the registration certificate will be issued.\nIf the registrar decides against the applicant, then the application will be\nrejected.<\/p>\n\n\n\n<div class=\"read\"><p><b>Also, Read:<\/b> <mark><a href=\"https:\/\/enterslice.com\/learning\/trademark-status\/\" target=\"_blank\" rel=\"noopener noreferrer\">Trademark Status: Opposed Vs Objected Vs Formalities Check Pass<\/a><\/mark>.<\/p><\/div>\n\n\n\n<h3 class=\"wp-block-heading\">Relevant Case Laws<\/h3>\n\n\n\n<p>In <strong>Parle Products (P) LTD. v J.P. And Co. [1972], <\/strong>the plaintiff was a manufacturer of biscuits and confectionery and was the owner of certain registered trademarks. The word &ldquo;Gluco&rdquo; was used on their wrapper with its colour scheme, general set up and collocation of names registered under the Trade Marks Act, 1940. This wrapper is used in connection with the sale of their biscuits known as &ldquo;Parle&rsquo;s Gluco Biscuits&rdquo; printed on the wrapper. The wrapper is of buff colour and depicts a farmyard with a girl in the centre carrying a pail of water and cows and hens around her on the background of a farmyard house and trees. <\/p>\n\n\n\n<p>The plaintiffs claim that they have been selling their biscuits on an extensive scale for many years past under the said trademark, which acquired great reputation and goodwill among the public. They claimed to have discovered in <strong>March 1961<\/strong>, that the defendants were manufacturing, selling and offering for sale biscuits in a wrapper which according to them was deceptively similar to their registered trademark. The plaintiffs assert that this act of the defendant constitutes an infringement of their trademark rights. <\/p>\n\n\n\n<p>In the present case, the court held that the packets are practical of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background, there is a farmhouse with a fence. The word &ldquo;Gluco Biscuits&rdquo; in one and &ldquo;<strong>Glucose Biscuits<\/strong>&rdquo; on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other. An ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendant&rsquo;s wrapper is deceptively similar to the plaintiffs which were registered. Thus the court held that the defendant had infringed the registered trademark of the plaintiffs.<\/p>\n\n\n\n<p>In <strong>Banga Watch Co. v\nN.V. Philips, (1983), <\/strong>&nbsp;the respondent\ninstituted an action against the appellants to restrain them from using the\nname of &lsquo;Philips&rsquo; on watches, clocks, etc. to pass off their goods as those of\nthe plaintiffs. The respondent company is engaged under the trademark &ldquo;Philips&rdquo;\nin the manufacturing of a wide range of electrical and non-electrical goods,\ne.g. radios, lighting products, refrigerators, medical apparatus, darkroom\ntimers, multiple electric clocks and timers. The appellants-defendants are\ncarrying on business in the sale of watches, clocks, etc. under the trademark\n&ldquo;Philips&rdquo; since 1954.<\/p>\n\n\n\n<p>In the present case, the court held that based on the facts\nthe trademark &ldquo;Philips&rdquo; to the knowledge of a common man was associated with\nthe products of the plaintiffs and that watches or clocks bearing the said name\nwould lead an ordinary customer to believe that it was their product. The\ndefendants are, thus, restrained from using the said trademark. <\/p>\n\n\n\n<h2 class=\"wp-block-heading\">Solution to Notice of Opposition<\/h2>\n\n\n\n<p>The solution to Notice of opposition is counter-statement or\nreply to the opposition which needs to be filled by the Applicant or the agent of\nthe applicant within <strong><em>two months. <\/em><\/strong>If the applicant fails\nto file the reply or the counter-statement, the application will be abandoned\nby the department.<\/p>\n\n\n\n<h3 class=\"wp-block-heading\">Conclusion<\/h3>\n\n\n\n<p>The trademark opposition is an effective remedy available to the registered proprietor\/ prior user of a trademark. All that the registered proprietor\/ prior user is required to do is to be vigilant on trademark watch and initiate an appropriate proceeding at the right time.<\/p>\n\n\n\n<div class=\"read\"><p><b>More on Trademark:<\/b> <mark><a href=\"https:\/\/enterslice.com\/learning\/reasons-trademark-objection\/\" target=\"_blank\" rel=\"noopener noreferrer\">Reasons for Trademark Objection<\/a><\/mark>.<\/p><\/div>\n","protected":false},"excerpt":{"rendered":"<p>A trademark opposition is a legal claim opted by any third party to view the trademark and file a trademark opposition against it. It can be made at the time before the trademark registration and after the filing of trademark application. A trademark opposition is initiated by filing a notice of opposition with the prescribed [&hellip;]<\/p>\n","protected":false},"author":34,"featured_media":30199,"comment_status":"open","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":[],"categories":[2432],"tags":[1716],"acf":{"service_id":"87"},"yoast_head":"<!-- This site is optimized with the Yoast SEO plugin v14.6.1 - https:\/\/yoast.com\/wordpress\/plugins\/seo\/ -->\n<title>Trademark Opposition: Grounds, Stages &amp; Relevant Case Laws-Enterslice<\/title>\n<meta name=\"description\" content=\"A trademark opposition is a legal claim opted by any third party to view the trademark and file a trademark opposition against it.\" \/>\n<meta name=\"robots\" content=\"index, follow\" \/>\n<meta name=\"googlebot\" content=\"index, follow, max-snippet:-1, max-image-preview:large, max-video-preview:-1\" \/>\n<meta name=\"bingbot\" content=\"index, follow, max-snippet:-1, max-image-preview:large, max-video-preview:-1\" \/>\n<link rel=\"canonical\" href=\"https:\/\/enterslice.com\/learning\/trademark-opposition-grounds-stages-and-relevant-case-laws\/\" \/>\n<meta property=\"og:locale\" content=\"en_US\" \/>\n<meta property=\"og:type\" content=\"article\" \/>\n<meta property=\"og:title\" content=\"Trademark Opposition: Grounds, Stages &amp; Relevant Case Laws-Enterslice\" \/>\n<meta property=\"og:description\" content=\"A trademark opposition is a legal claim opted by any third party to view the trademark and file a trademark opposition against it.\" \/>\n<meta property=\"og:url\" content=\"https:\/\/enterslice.com\/learning\/trademark-opposition-grounds-stages-and-relevant-case-laws\/\" \/>\n<meta property=\"og:site_name\" content=\"Enterslice\" \/>\n<meta property=\"article:publisher\" content=\"https:\/\/www.facebook.com\/enterslice\" \/>\n<meta property=\"article:published_time\" content=\"2020-04-01T13:33:35+00:00\" \/>\n<meta property=\"article:modified_time\" content=\"2022-09-13T11:11:41+00:00\" \/>\n<meta property=\"og:image\" content=\"https:\/\/enterslice.com\/learning\/wp-content\/uploads\/2020\/04\/Trademark-Opposition-Grounds-Stages-and-Relevant-Case-Laws.jpg\" \/>\n\t<meta property=\"og:image:width\" content=\"670\" \/>\n\t<meta property=\"og:image:height\" content=\"352\" \/>\n<meta name=\"twitter:card\" content=\"summary\" \/>\n<meta name=\"twitter:creator\" content=\"@enterslice\" \/>\n<meta name=\"twitter:site\" content=\"@enterslice\" \/>\n<!-- \/ Yoast SEO plugin. -->","authorName":"Soumya Bajpai","authorImageUrl":"https:\/\/enterslice.com\/learning\/wp-content\/uploads\/2020\/02\/Soumya-Bajpai.jpg","authorDescription":"Soumya has done LLB (Hons) and has a 2+years experience in writing. Her main interest is in reading judgments, new enactments and amendments taking around in law. 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