Grounds For Trademark Opposition

The Indian trademark law does not provide any specific grounds for opposition. There are various reasons a trademark opposition may be opposed mentioned below:

• The trademark is similar or identical to an earlier or existing registered trademark.
• The trademark is devoid of distinctive character.
• The trademark is descriptive.
• The trademark registration application is made in bad faith.
• The trademark is customary in the current language and or in the established practices of a business.
• The trademark is likely to deceive the public or cause confusion.
• The trademark is contrary to the law or prevented by law.
• The trademark is prohibited under the Emblem and Names Act, of 1950.
• The trademark contains matters that are likely to hurt any class or section of people’s religious feelings.

Procedure for Trademark Opposition

Opposition Notice

Within four months of the first date of appearance, any person may file a notice of opposition to a trademark that appears in the trademark journal.

It must be filed on Trademark Form 5 in the prescribed format and with the applicable fees.

Counter-Statement

The trademark registrar would serve a copy of the trademark opposition notice to the trademark applicant after the trademark opposition notice was filed with the registrar. The trademark applicant must file the counter statement within two months of receiving the opposition notices.

The trademark application will be “abandoned” if the trademark applicant fails to file the counter statement within the specified time frame. However, it is necessary to understand the status of trademark registration.

Hearing

After the evidence filing stage, the registrar shall send notices to both parties stating the date of hearing, which shall be at least one month after the date of the first notice. The hearing is based on the opposition notice, counter-statement filing, and evidence submitted. The registrar hears the case, and if any of the parties fail to appear for the hearing, the registrar will rule against them.

Appeals

The registrar decides whether the opposition was successful based on a review of the evidence submitted and a hearing of both parties, and thus whether the trademark should be registered or not. However, a party who is dissatisfied with the registrar’s decision may appeal it to the Intellectual Property Appellate Board.

Time Limit for Trademark Opposition

After the trademark advertisement in the Trade Marks Journal, any person can oppose the trademark registration for three months (which may be extended by a period not exceeding one month). Trademark opposition filings can only be done at the Trademark Registrar’s office and cannot be taken to a Court or the Appellate Board directly (IPAB).If a trademark opposition is successful, the trademark’s registration will be rejected. The brand will be registered if the trademark opposition application is rejected.