When an application for registration of a trademark is filed with the Registrar, the Examination Officer shall advertise the application for any objection if any party feels that the trademark held for registration infringes their trademark. They can file an application to the Registrar.
This Application filed with the Examination Officer is known as Trademark Opposition
When the examiner reviews your trademark and finds that it is eligible for registration, your trademark will be published in the Trademark Journal. Published Trademark in Journals offers a third party a view of the filed trademark and gives them an opportunity to file a protest against it if the published trademark infringes their trademark as per the Trademark Act.
The Time limit for filing a Trademark Opposition
Third-party reserves the right to file a trademark opposition within 3 months (extendable by a further 1 month) from the date of publication of the trademark.
Who can File an Opposition?
Under section 21 of the Trademark Act, any person, irrespective of his interest in the matter, can file a protest before the Registrar. This section provides the right to the person to oppose the registration of the trademark. The competitor’s registration status in the Trademark Registry is unimportant.
Grounds for Filing a Trademark Opposition
- The icon is generic in nature.
- An icon is descriptive in nature.
- The symbol is devoid of a special character.
- If the mark is a danger to the public, against public morals, or hurts religious sentiments.
- The mark is contrary to the law or is prohibited by law.
- If the mark falsely represents a geographic area.
- The trademark is identical or identical to a previous or existing registered trademark
- The applicant has a bad intention to deceive the public and it has been made in bad faith.
- Trademark is prohibited under the Symbols and Names Act, of 1950
- The mark is customary in the current language or in established practices of business.
What must be included in your Opposition/Reply?
An application for the opposition which is filed by the person with the Registrar should always include:
- Brief/specific reasons for raising a protest or responding to a protest.
- Relevant case law to support your protest/response.
- A User Affidavit will be provided to prove the widespread use of the mark by the person filing the application.
- To prove that the applicable trademark is a well-known trademark used by another competitor.
- Other evidence supports the implicit use of the mark and establishes specificity.
Procedure For Filing an opposition
- Notice of Opposition
Any person can file a notice of protest on the trademark advertised in the Trademark Journal within 3 months (extendable up to 1 month) from the date of advertisement.
The applicant has to file a counterclaim within 2 months of the receipt of the notice of protest. If the counter-statement is not filed within 2 months from the objection (extendable by one month) then the applicant is deemed to have abandoned the Trademark Application.
- Evidence in support of the opposition:
The third party (the counterparty) also has the option of writing to the Registrar with a statement that he does not wish to file evidence but instead relies on the facts stated in the opposition notice if the applicant files the counter-statement within 2 months. does (extendable to one month from the date of receipt of counter-statement) the defendant shall file evidence by way of an affidavit.
- Evidence in support of the application:
On receipt of the defendant’s evidence, even the applicant is provided 2 months (extendable up to 1 month) to file evidence in support of the application/answer, if any.
- Evidence in Answer:
In response to the applicant’s evidence, the respondent has to give his reply within one month ((extendable to 1 month) for filing the evidence.
- The hearing:
The Registrar of a Trademark shall, within 14 days of the receipt of the notice of hearing, call for a hearing on the basis of the notice of protest, the counter-argument, and the evidence filed. The intention to appear to the Registrar shall be submitted by the parties. The matter is then taken up by the Registrar for hearing and deciding on the merits.
- Registration or Rejection:
If the registrar decides in favor of the opposite, the trademark application will be rejected. If the registrar decides in favor of the applicant, the trademark will be registered and a certificate of registration will be issued.
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Frequently Asked Questions
What is Trademark opposition cost estimate
Who can respond to a trademark notice of opposition?
Section 21 of the Trademark Act, of 1999 provides that any person may file a notice of protest to the Registrar. This includes companies, individuals, trusts, and partnership firms. Thus, any aggrieved third party can oppose trademark registration.
What are Trademark Opposition grounds?
The trademark is the same or similar to an already existing registered trademark. Trademark is descriptive in nature. The trademark is devoid of distinctive character. Trademark is customary in the current language or established practices of business.
Ipindia Official gazette?
The Official Gazette for the trademark is published every Tuesday in electronic form only. This includes bibliographic (i.e., front page) information, a representative claim, and a drawing of each patent (if applicable), a re-examination certificate, and the statutory invention registration issued that Tuesday.
Which section is the cancellation of the trademark?
Section 47 of the Trademark Act deals with rules for removing trademarks. civil court procedure is similar to that followed by the Registrar of Trademarks. If the Appellate Board passes for cancellation, the registrar is informed of the cancellation of the trademark. A writ petition can be filed in the High Court against the order of the Appellate Board.
How long does a trademark have to be published for Trademark Opposition
A trademark may be opposed once it was published in the Trademark Journal within the stipulated period of four months from the date on which the mark was advertised or re-advertised.
What is the opposition?
Once a trademark application is accepted for registration, details of the application are advertised in the Intellectual Property Office Journal so that any interested parties can object to it being registered. The objection process is known as a trademark opposition
Can anyone oppose a trademark?
Yes. Any person having reasonable grounds may oppose the registration of a trademark.
What are the usual grounds for the opposition?
The grounds of opposition are set out in the Trade Marks Act 2002. The most common claims are that: The mark sought to be registered is confusingly similar to another trade mark which is either registered or in use by another party, The mark is descriptive or incapable of distinguishing the applicant’s goods or services from those of others, The mark is deceptive, and/or The mark has been misappropriated from another party:
Who decides whether the application will be registered?
Trademark opposition proceedings are dealt with by the Intellectual Property Office of New Zealand (“IPONZ”) and decided by the Commissioner of Trade Marks.
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