A trademark opposition is an opposition being raised by any third party when any trademark application is being filed with the Trademark Registrar. As we know that trademark registration is a very long process, trademark opposition can further delay the process of registration. When the applicant filed an application for a trademark, the registrar after examining the application and after satisfied with all the information and/or documents publishes the trademark in the official gazette and asked for the objection from any third party.
Here the mark is open for objection from any third party who may have filed or is using the trademark from a longer period the publication is for a period of 3 months and there the Registrar initiates the process of issuance of the Registration certificate. Meanwhile, if any opposition is being made by any third party, then the opposition proceeding started by the registrar here both parties are provided an opportunity to prove their claim. There is always confusion in the mind of applicants about the difference between objection and opposition. While registering your trademark, Examiner examines the application and issue objection this is raised either in Section 9 or in Section 11 of the Trademark Act. The opposition is something which is being raised by any third party when the trademark is passed by the examiner and publishes in the official gazette. Hence one can say the objection is a preliminary stage and issued in initial stages and the opposition is issued in the later stages.
PERSON WHO CAN OPPOSE THE TRADEMARK
It has been provided under the Trademarks Act, 1999 that the opposition can be raised by “any person” it does not matter whether he has registered the same mark or not with the trademark registry. Anyone can do it by just filling a form as prescribed under the Trademarks Act, 1999 along with the fees. Anyone includes any purchaser or any customer or any other person.
TIMELINES OF FILING ANY OPPOSITION
As already discussed the opposition can be raised by any person after the trademark is being published in the official gazette. It is provided under the Act that opposition must be submitted within a period of 3 months with a month extension.
GROUND ON WHICH IT CAN BE OPPOSED
There can be number of ground basis of which an opposition to the trademark can be raised,
- Very common that the trademark is similar or identical to an existing mark
- The trademark is descriptive in nature
- The application is made with bad faith
- The trademark is likely to cause confusion in the eyes of general public
- It is contrary to the law or is prevented by law.
There can be other ground as well.
HOW TO FILE AN OPPOSITION
It is to be noted that an opposition must be filed within the stipulated time. It can be filed with the office of trademark registration. Here is how it can be filed:
Step 1: Submission of Notice
As already discussed, the opposition must be filed with the trademark registry within such time as provided under the Act, The opposition shall be filed in Form TM –O alongwith the fees as provided under the Act. It is pertinent to mention here that the application no. must be mention in the notice of opposition. The notice shall first send to the registry which shall verify the information and it after reviewing the notice send it to the applicant for such trademark. Once the applicant against whom the notice issued, receive it he shall within a period of 2 months submit a counter statement in Form-O alongwith the statutory fees as prescribed under the Act. The application shall be abandoned in case the counter statement is not filed within aforesaid period there is not further extension. Counter statement is nothing but a parawise reply to the opposition being issued. Same like the first one counter statement shall first be verify by the trademark registrar then it shall be sent to the other party.
Step 2: Submission of Evidence
The counter statement shall be filed with the Trademark registry within a period of 2 month. The applicant against whom the notice of opposition is raised shall provide evidences to support his statement alongwith the affidavit as provided under the Trademark Act. The same must be submitted as soon as possible otherwise the application shall be treated as abandoned.
It is not only the applicant who shall submit the evidence but the party to opposition may also submit the evidence proving his claim. Both the assertion shall be reviewed by the trademark registry and an opportunity of being heard shall be provided before pronouncing any order in this regard.
Stage 3: Personal Hearing
Once above stages are completed, a date of personal hearing shall be provided by the Trademark Registry and both the party shall be notified about the same. A request for adjournment can also be made in specified form however the same shall be submitted 3 days prior to the date of hearing being notified by the Trademark Registry. Only 2 maximum adjournments are allowed by the Trademark Registry and the days are also restricted to 30 days only.
The registrar shall after listen to the contentions of both the parties announcing its understanding to the facts and decide whether the trademark should be registered or not ie., it shall conclude the proceedings. However, the parties if aggrieved with the order issued by the Registrar may approach to the Intellectual Property Appellate Board by filing an appeal against the order of the Trademark Registrar.
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