Trademark opposition in India comes at a stage after the registrar has approved the trademark application on the grounds of distinctiveness and published the third-party opposition's trademark in the journal.
According to Section 21 of the Trademark Act, 'any person' can oppose a trademark, irrespective of their commercial or personal interest in the matter.
A trademark can be countered by filed by a customer, member of the public or competitor, or any other person. Also, the person filing the trademark opposition needs to be a prior registered trademark owner.
After a trademark opposition is filed, both parties need to conclude whether the trademark should be abandoned or registered
Anyone who believes that the published mark might create confusion among the public can file for the opposition while defending the trademark lies in the trademark registrant's hands.
The Indian trademark law does not provide any specific grounds of opposition. There are various reasons a trademark opposition may be opposed mentioned below:
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.
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.
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 fails to appear for the hearing, the registrar will rule against them.
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.
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.
For opposing a trademark Form, TM-5 must be filed by the opponent. As per the application, the opposition of the trademark must be filed in the appropriate trademark office. The TM-5 form must contain the following details:
The trademark opponent or an authorized person who is acquainted with the case's facts should sign the notice of the opposition.
People often get confused between trademark objection and trademark opposition. We have a table to explain the fundamental difference between the trademark objection and trademark opposition.
|A Trademark Examiner issues trademark objection.
|A trademark gets opposition from a third party.
|One does not need to pay fees.
|Fees are required to be submitted along with the reply to the opposition.
|A reply should be submitted within one month.
|A reply should be submitted within three months(which may exceed not more than one month)
|Trademark objection is a part of the registration process.
|A trademark opposition is a different process.
|If there is no response from the applicant, it leads to the removal of the trademark.
|Similar is the case with trademark opposition; no response will lead to the removal of the trademark.
|An appeal can be made after the rejection.
|An appeal can be made after the judgment is passed.
|Any word, phrase, symbol or design that recognizes and differentiates the source of one party's goods from those of another.
|Inventions, such as procedure, manufacturer, composition, machines of matter as well as improvements to these.
|Books, articles, music, photography, sculptures, dances, sound recordings, motion films and other original works of authorship.
|Requirements for protection
|A mark must be distinguishable, in the sense that it must be able to identify the source of a certain good.
|A fresh, valuable, and unusual invention is required.
|A work must be unique, original, and created in a tangible manner.
|Term of protection
|As long as the mark is used in commerce.
|Author’s life span+ 70 years.
|Right to use the mark and to prohibit others from using identical marks in a way that could create confusion about the goods or services' origin.
|Right to restrict others from manufacturing, selling, or importing the patented invention.
|Copyrighted works have the power to dictate their reproduction, creative works, circulation, public performance, and display.