What is Trademark?
A legally recognized symbol, sign, word, phrase, logo, or design that identifies a particular good or service, company, or organization is called a trademark. It is a unique identification that helps customers differentiate the products or services of one business from another.
Trademark Opposition
The Trademarks Act 1999 governs the registration of trademarks in India. To register a trademark, the owner must apply to the Registrar of Trademarks. The trademark will be published in the trademark journal by the Registrar upon receipt of the application.
Any individual who sees their trademark published in the Trademark Journal is entitled to object to its registration. The Registry of Trademarks, where the initial application for trademark registration was filed, is the appropriate place to register the opposition. The trademark registry will hold a hearing to settle the issue after receiving an opposition.
Grounds for Trademark Opposition
The following are the various reasons why a person can oppose the trademark registration:
- The trademark is identical or like an existing registered trademark.
- The trademark is merely descriptive.
- The trademark lacks distinctive character.
- The trademark is a commonly used term in current language or established business practices.
- If it’s evident that the application for trademark registration was made in bad faith, meaning it was done with malicious intent or to unfairly benefit from someone else’s reputation or goodwill.
- If the proposed mark is prohibited by law or violates legal regulations, such as containing offensive or illegal content, or infringing on existing trademarks or intellectual property rights.
- If the trademark is likely to cause confusion among consumers or deceive the public regarding the source or quality of the goods or services associated with it.
- The trademark contains elements that may offend the religious sentiments of a particular group or class of people.
- The trademark is prohibited under the Emblem as well as Names Act of 1950.
The Importance of Trademark Opposition
The trademark opposition process in India plays a crucial role in ensuring that only deserving trademarks receive registration. It encourages public involvement and prevents conflicting trademarks from coexisting in the market. Adhering to timelines and filing requirements in a timely manner is essential for presenting a strong case.
Trademark Registration Process Overview
Securing exclusive rights to a brand identity through trademark registration involves several crucial steps. Below is an overview of the trademark registration process:
- Trademark Search: Conduct a comprehensive search to ensure there are no similar or conflicting trademarks already registered or pending. This helps prevent a potential opposition issue.
- Application Filing: Submit a trademark registration application to the relevant authorities, providing detailed information about the proposed mark and goods/services.
- Publication: If the application passes the examination, the mark is published in the Trademark Journal for public review.
- Trademark Opposition Period: During publication, a four-month window allows anyone to raise objections to the trademark registration.
- Response and Hearing: If an opposition is raised, both parties can respond and present their case during the opposition proceedings.
- Trademark Registration: The trademark is registered in the absence of successful objections or opposition and upon meeting all requirements.
Procedure for Trademark Opposition
The following are some of the key stages of the trademark opposition process that are linked to the submission of evidence:
Notice of Opposition
Within four months of the publication of a trademark application in the trademark journal, any individual or entity has the right to initiate a trademark opposition. By filing a notice, utilizing Form TM-O, and making the necessary fee payment, this opposition is formally registered. The notice should include specific details about the trademark application, information about the opposing party, and the grounds for the opposition. The Registrar then provides a copy of this notice to the applicant.
Counterstatement
Upon receiving an opposition, the applicant is required to file a counterstatement with the Registrar within two months, utilizing Form TM-O. This counterstatement should express the applicant’s viewpoint and provide information. The Registrar then furnishes a copy of the counterstatement to the opposing party. Failure to submit a counterstatement within the specified period leads to abandonment of the trademark application.
- Evidence Submission: Stage One — After receiving the counter-reply, the opposing party is given a two-month period to gather and submit supporting documents and evidence. This helps strengthen their opposition case.
- Evidence Submission: Stage Two — The applicant can utilize this stage to submit their own evidence or inform the registry of their intention to present additional documents during the hearing.
- Optional Evidence Submission – Stage Three — The opposing party can submit additional evidence if needed. If not provided, the hearing proceeds based on previously submitted evidence.
Hearing and Decision
Following the exchange of evidence and document submissions, the Registrar informs both parties of the initial hearing date. If the opposing party is absent on this date, the opposition is dismissed, and the trademark proceeds to registration. Conversely, if the applicant fails to appear, the application is considered abandoned.
During this phase, the Registrar evaluates the written arguments presented by both parties during the proceedings. After carefully reviewing all evidence and arguments, the Registrar makes a decision regarding the approval or rejection of the trademark registration. This decision is formally communicated to both parties at the addresses provided.
