If the Registrar of Trade Marks approves the application for advertisement, the trademark will be advertised in the Indian Trade Marks Journal. As per Section 21 of the Trade Marks Act, 1999 any person can initiate opposition proceedings against the advertised trademark. The Trademark opposition should be filed within the prescribed period of three months which is extendable by a period of one month by the Registrar on a request filed by the opponent.
Procedure of Trademark Opposition in India
The Opposition proceedings are to be initiated before the appropriate office of the Registrar of Trade Marks. The jurisdiction is on the basis of the place of filing of the trademark application. Any person may initiate opposition proceedings in India under the Trade Marks Act by filing Form TM-5. Upon receipt of the Notice of Opposition, the Registrar will serve a copy to the Applicant in due course.
Counterstatement : The Trademark Applicant within two months from the date of receipt of such Notice of Opposition is required to file the Counter Statement in Form TM 6.
If the Counter Statement is not filed within the said stipulated period, the applicant would be deemed to have abandoned the trademark application.
After the Counter Statement is filed, the Registrar is required to serve a copy of the Counter Statement on the opponent.
Evidence in support of Opposition : The Opponent in turn has two months time to file the Evidence in Support of Opposition by way of an Affidavit. The Opponent also has the option of writing to the Registrar that he does not intend to file evidence but relies on the facts stated in the Notice of Opposition.
If Opponent takes no action within 2 months, then the opponent would be deemed to have abandoned his Opposition.
Evidence in support of Application : On receipt of copies of affidavit filed by opponent, or an intimation by the Registrar of Trademarks, the Applicant has two months time for filing Evidence in Support of Application.
Evidence in Reply : The Opponent has one month time to file Evidence in Reply upon receipt of the Evidence in Support of Application. Upon completion of the above, the Registrar gives notice to the parties of the date of Oral hearing. Within fourteen days of the receipt of the notice of hearing, both the applicant and the opponent are required to notify the Registrar of their intention to appear in the matter. On the appointed date, the matter is heard by the Registrar and is decided upon merits of the case.
Grounds of Opposition:
The various grounds to initiate Opposition Proceedings are as follows:
Trademark applied for is:
Devoid of distinctive character
Descriptive in nature
Customary to the product in the current language
Likely to deceive the public or cause confusion
likely to hurt religious feelings of any class or section of the citizens of India
Prohibited under Emblem and names (Prevention of Improper Use) Act, 1950
Exclusively of the shape of the goods
Identical with/similar to an earlier trademark
Filed in Malafide/bad faith
To be prevented by virtue of the law of passing off
Contrary to any law for the time being in force
Prevented by way of Copyright Act, 1957
The grounds for rectification/cancellation proceedings in India are also similar to the Trademark Opposition.
The Opposition proceedings are an effective tool available to registered proprietors of a trademark. By being vigilant and initiating appropriate proceeding at the right time would help prevent infringement.
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