What is Trademark Opposition?
When an application for trademark registration in India is applied, it is advertised by the registrar in the trademark journal, a third party can file an opposition to the trademark registration within four months from the date of advertisement. When an opposition has been filed made against your trademark the online trademark registration status will appear as “opposed”.
On submission of the trademark registration application, the trademark examination is followed during which if your application is found suitable for registration it will be published in the Trademarks Journal. The motive behind such publishing is to get the work known to the public and enable any third party to raise trademark opposition against it. Only if he/she is aggrieved by such registration shall raise the trademark opposition online.
The two main hindrances in the trademark registration are trademark objection and trademark opposition. In cases of not filling the reply or improper, week, non-sustainable replies your application can be rejected or canceled. It has been mostly observed that the trademark registration application is rejected after submission of a legally week counter statement.
We strongly suggest take a help of a trademark expert or trademark consultancy or trademark lawyer, or such professional having strong drafting defense skill, aware of recent case laws, and is capable to draft a strong trademark opposition reply/ counter statements against the trademark opposition so raised by parties claiming to be aggrieved by your trademark registration.
Enterslice has immense experience in filings strong trademark counter-statements, its trademark registration specialists have set a benchmark in representing the trademark counters statement and shall also assist you on how to avoid trademark opposition, contact us to get trademark opposition counter statement filled through us.
Who can file a Trademark Opposition?
- Any person can file the notice of opposition and can be an individual, companies, partnership firms, and trusts.
- It is absolutely fine in cases where two or more persons have the same issues against a trademark; there can be joined opposition as opponents against such trademark registration.
- The owner of an earlier trademark application
- A prior user of such trademark.
Where to file the Notice of Trademark Opposition in India?
The notice of Trademark opposition should be filed at the trademark registry where the application for the conflicting mark has been filed.
Let’s understand with an example:
Consider if the application is filed at the Delhi office of the Trade Mark Registry, in that case, the opposition proceedings must initiate in Delhi only.
What to do if status appears as "opposed"?
In such case, you need to prepare a counter statement within the time duration of four months (3+ 1 month extendable) from the date of advertisement. It will be wise if you get your counter statements framed from a trademark expert and filed by them.
Note that the trademark application will be abandoned if no such counter statement is filed by the registry within the stipulated time period.
Trademark Opposition Fees
Trademark opposition reply
Rs. 29999 (Excluding GST)+Government Fees (Online 2700+ GST and Offline 3000+GST)
Trademark opposition reply + End to end service and follow ups
Rs. 49999(Excluding GST) + Government Fees (Online 2700+ GST and Offline 3000+GST)
What are the possible reasons for a trademark opposition in India?
The Trademark opposition is done in the following cases:
- When a similar mark published in the journal or
- A mark is non-distinctive.
- The mark is having a descriptive nature.
- The application for the trademark is not is a good spirit and on bad faith.
- The mark is already established practices of a business or a customry in the current language.
- The trademark is likely to cause confusion.
- It is contrary to the law or is prevented by law.
- The trademark is prohibited under the Emblem and Names Act, 1950
- Where the mark contains matters which are likely to hurt religious feelings of any class or section of people.
What are the different stages and the procedure for Trademark Opposition in India?
The following stages are involved in the Trademark Opposition procedure:
- Step1: Any such person aggrieved of concerned trademark registration can file a notice of trademark opposition online within 4 months from the date of advertisement.
- Step2: Thereafter within 2 months of the receipt of the notice of opposition, the Applicant can file a counter statement.
- Step3: Along with the Counter-Statement certain supporting evidence if available shall be attached. The Counter statement must be filed be filed within 2 months (extendable by one month) by way of an Affidavit.
- Step4: The Opponent also provides certain evidence in his arguments, however, he has an option to write to the Registrar informing he/she does not desire to file evidence and facts are the relying points all he has.
- Step5: The Opponent on request may be allowed 1 month (extendable by 1 month) to file Evidence in response to the Applicant’s evidence.
- Step6: Hearing shall be held and bases the notice of opposition, counter-statement, and evidence filed, the Registrar shall conduct the hearing.
- Step7: On receipt of the notice of hearing, within 14 days the parties are required to notify the Registrar of their intention to appear in the matter.
- Step8: Finally, both the parties on being given enough opportunity of being heard, the Registrar decides the matter upon merits.
- Step9: If the matter is decided in favor of the applicant, the trademark will be registered and registration certificate will be issued. If the registrar decides in favor of the opponent, then the trademark application shall be rejected due to such trademark opposition.
NOTE 1: In case the Counter Statement is not filed within 2 months, the Applicant shall be deemed to have abandoned the Trademark application.
NOTE 2: Upon receipt of the evidence of the Opponent, even the Applicant is provided with 2 months (extendable by 1 month) for filing Evidence in Support of Application, if any.
Well, the trademark opposition is a sort of remedy, which can be availed by registered proprietor/ prior user of a trademark. However, all the registered proprietor/ prior user is required to keep their eyes open to raise trademark opposition.
So just stay vigilant on trademark and as soon as such your rights encroach upon initiate an appropriate proceeding at the right time.
Difference between trademark objection and opposition
- Trademark objection is usually issued by the trademark examiner and on other hand, trademark opposition is filled by the aggrieved (third) party.
- The person raising the objection is not required to pay any fees for such objection, however, a person who raises the trademark opposition files it with the requisite specific fees.
- The objection is to be raised within 1 month, and in case of trademark opposition, it is to be filed in 4 months from the date of advertisement.
- Acceptance of the mark which is communicated to the trademark applicant will be published in the trademark journal, in case of trademark opposition the judgment will be communicated to the parties, i.e the trademark applicant and the aggrieved.
What are the services Enterslice offers with respect to Trademark opposition?
Our services for trademark opposition:
- We shall draft the Trademark opposition reply for you.
- Appearance through a lawyer if needed.
- Strong counter statements for trademark opposition shall be filed by us along with requisite evidence.
- Trademark Opposition reply format.
- Updates on developments related to IPR (Intellectual property).
- We are also engaged in preparing Compliance calendar applicable to your establishment.
- Free consultation on counter statements for trademark opposition.