Renewal of Trademark

Trademark Opposition is an intrinsic stage involved in the process of trademark registration in India.

Basic Requirements of Filing an Opposition

A trademark can be opposed once the same has been published in the Trademarks Journal within a prescribed period of four months from the date on which the mark was advertised or re-advertised. The Trade Marks Act, 1999 provides that any person can oppose the registration of a mark published in the Journal by filing a notice of opposition with the Registry in the prescribed manner and with the requisite fee. The Act provides that any person can file a notice of opposition against the trademark and the Opponent is not required to have an application/registration in India to oppose any trade mark.

Grounds for Opposition-

• Absolute grounds of refusal as provided under Section 9 of the Act, i.e. the trademark not being distinctive or not being capable of distinguishing the goods/services of the Applicant from those of others or being generic, descriptive or common to trade.
• Relative grounds of refusal as provided under Section 11 of the Act, i.e. the trademark being phonetically, visually, conceptually, confusingly and deceptively similar/identical to the Opponent's trademark and/or in respect of similar goods/services.
• Other relevant grounds depending on the facts of the matter, i.e. the Opponent's trademark being well-known, copyright in the artistic work, geographical indication etc.

Procedure of Opposition

The various steps involved in the trademark opposition are:

• The trademark has to be opposed once the same has been published in the Trademarks Journal within a prescribed period of four months from the date on which it was advertised.
• The Registrar shall ordinarily serve a copy of the notice of opposition to the Applicant of the trademark within three months from the date of receipt of the same.
• Within two months of receiving the notice of opposition, the Applicant shall file its counter statement specifying the facts and submissions in support of their application under opposition.
• According to the Trade Mark Rules, 2017, there is a provision of speeding up the process by availing the option of filing counter statement in support of its application before the service of the notice of opposition.
• If the Applicant fails to file its counter statement within the stipulated time, then the Applicant's trademark shall be deemed to have been abandoned for non-prosecution.
• If the Applicant files the counter statement, the opposition proceeds to the evidence stage.
• The Registrar shall ordinarily serve a copy of the counter statement on the Opponent within two months from the date of receipt of the same.
• Within two months of receiving the counter statement, the Opponent shall file its affidavit by way of evidence in support of the opposition with the Trade Marks Registry and serve a copy on the Applicant.
• Within two months of receiving the affidavit by way of evidence in support of the opposition, the Applicant shall file its affidavit by way of evidence in support of the application with the Trade Marks Registry and serve a copy on the Opponent.
• Within two months of receiving the affidavit by way of evidence in support of the application, the Opponent shall file its affidavit by way of evidence in reply with the Trade Marks Registry and serve a copy on the Applicant.
• In case the affidavit in support of opposition/application are not filed, the opposition/application would be deemed to be abandoned for non-prosecution.
• In case the pleadings are complete, the matter will proceed to hearing in due course. After hearing the parties and considering the evidence, the Registrar shall decide whether the trademark is to be accepted for registration or not.
• The decision of the Registrar made in the opposition proceedings can be challenged by an aggrieved person by filing a review with the Registrar or an appeal before the Intellectual Property Appellate Board.