Trade Mark Opposition

In the process of acquiring registration for a trademark, after passing the examination stage, every application shall be published in the Trademarks Journal before it can proceed with registration. 

A person aggrieved with such an application can file a Notice of Opposition against the published trademark application, on certain grounds as mentioned in Section 21 of the Trade Marks Act, 1999, within four months of advertisement or re-advisement of the Trademark Application in the Trade Marks Journal. 

Not necessarily the person opposing a trademark application will be a trademark owner. Opposition can also be filed by any person aggrieved due to the existence of the trademark application. 

OPPOSITION GROUNDS

• The trademark to be registered is neither distinctive nor capable of distinguishing the goods/services thereunder. Any individual/company being aggrieved due to such an indistinctive and descriptive trademark can oppose such a trademark application. 

• For example, if a Company ‘XYZ’ wants to trademark the name “TURMERIC CREAM” then it is likely to be opposed as turmeric cream is a descriptive name and does not distinguish the source of goods or services. 

• The trademark is identical to the earlier registered trademark, causing infringement to the earlier trademark. 

• For example, person ‘A’ acquired protection to trademark ‘ABC Your Box’ in year 2010, later person ‘B’ applied for ‘ABC Your Box’ for the same/similar goods/services in the year 2015 on a proposed to be used basis, then person ‘B’ is liable for causing infringement to the earlier registered trademark of ‘A’.
• Person ‘A’ can file a Notice of Opposition, when the subsequent trademark of person ‘B’ is published in the Trademarks Journal if not already refused by the Registry at the Examination stage. 

• If the trademark is deceptively similar to the earlier registered trademark, the registered trademark owner can oppose the trademark application. 

• For example, registering "NIKEEY" for shoes would infringe on the existing trademark of "NIKE". 

• If the trade mark is identical/ deceptively similar to an unregistered but prior used trademark, the prior user of the trademark can oppose the trademark application under the Common Law rights. The prior user need not be a registered trademark owner.  

• For example, a person ‘X’ has been using the trademark ‘treenket’ in the market since 2020, subsequently person ‘Y’ adopted and applied a trademark ‘treenket’ or ‘threenket’ to acquire trademark registration. In such a case, the earlier user (Person X) has the right to oppose the trademark application under the common law of passing off.

• If the trademark contains obscene or scandalous matters, any person aggrieved by such can oppose the trademark application. 

• For example, a vulgar word or offensive image of a particular matter that has taken place in the community can be opposed by third parties upon being aggrieved due to such trademark. 

• If the trademark represents any anti-national character or reference to the emblem of the country. 

• For example, using a trademark that insults the national character or resembles an emblem of the country, can be opposed and refused on such grounds.

• If the nature of the trademark deceives the public or the application is made in bad faith.

• For example, A company selling processed milk under the brand name "Organic Milk’O" to trick customers into thinking it’s organic when in fact it’s not. Or when a company applied “Organic Milk’O” which is a known but unregistered trademark solely to prevent another from using the known trademark.  In such cases, opposition can be filed by the aggrieved party whose interest is being harmed.

• If the nature of the Trademark hurts the religious sentiment or any social group or a particular class of people or the citizens. 

• For example, a logo showing disrespect to a religious symbol, like a deity, would hurt religious sentiments and cannot be registered if such a trademark erroneously is published in the trademarks journal, then the parties being aggrieved can rightfully file an opposition to such trademark application.

ESSENTIAL TO BE FULFILLED FOR FILING SUCH NOTICE OF OPPOSITION.

• Notice of opposition shall be filed under the prescribed Form TM-O.
• It shall be filed by paying the prescribed fees. 
• It shall abide by Rule 42 of the Trade Marks Rules, 2017, such as filing an opposition notice within four months from the date of its publication.
• It shall contain certain particulars as prescribed under Rule 43 of Trade Marks Rules, 2017.

Opposition Notice must include details such as

• Applicant’s Information: Name, address and nationality.
• Opponent’s Information: Name, address and nationality.
• Trademark Information: Trademark, date of publication, description of goods/services, class of goods/services. 
• Grounds: Grounds for filing the notice of opposition
• Power of Attorney: The Opponent must attach a power of attorney to authorize an attorney to file an opposition on their behalf.

Stages of Trademark Opposition:

• Notice of Opposition: Filing a notice of opposition within four months of the publication of the trademark application in the Trade Marks Journal.
• Counter-Statement: Within two months of the receipt of the Notice of Opposition from the Hon’ble Registry, the Applicant is required to provide a response by way of filing a counter-statement in Form TM-O
• Affidavit as Evidence (Opposition): Within two months of the receipt of the Counter-Statement by the Opponent from the Hon’ble Registry, the Opponent is required to provide an affidavit as Evidence under Rule 45 in support of the opposition or a letter relying on the contents of the opposition. The Opponent is required to serve a copy of the affidavit or letter to the Applicant/his Agent/Attorney and intimate the Registry of such service.
• Affidavit as Evidence (Application): Within two months of the receipt of the Affidavit as Evidence under Rule 45, the Applicant is required to provide an Affidavit as Evidence under Rule 46 in support of the Application or a letter relying on the contents of the counter-statement. The Applicant is required to serve a copy of the Affidavit as Evidence under Rule 46 to the Opponent/his Agent/Attorney and intimate the Registry of the service made.
• Evidence in Reply: The Opponent within one month of the receipt of the Affidavit as Evidence under Rule 46, may file evidence by way of Affidavit under Rule 47 and serve a copy of the same to the Applicant/his Agent/Attorney and shall intimate the Registrar of the same in writing.
• Further Evidence (Rule 48): At this stage, no further evidence is left on either side. The Opponent/Applicant can provide further evidence in support of the opposition/ application only at the discretion of the Registrar.
• Hearing and Decision: After completion of each stage, the Registrar issues a notice of hearing to be scheduled at least 30 days after the date of such notice. The Opponent/Applicant can apply for adjournment of the hearing by filing an adjournment request under Form TM-M by providing reasonable cause. No party shall be allowed more than two adjournments. Moreover, no adjournment shall be of more than 30 days from the date of the hearing which was initially scheduled to take place. If either party remains absent on the adjourned date and time as mentioned in the notice their opposition/application shall be treated as dismissed/abandoned respectively. For such a hearing, written submission made by either party is required to be taken into consideration by the Registrar. Lastly, the decision of the Registrar will be directly communicated to the parties in writing at their respective addresses.

A trademark applicant must be vigilant at the time of filing the trademark application in order not to attract opposition to their application.

To get more insight relating to trademark opposition, filing a response to the opposition notice, and providing evidence in support of your case, consulting a trademark attorney is highly recommended.