The Trademarks Act, of 1999, presents for the registration of an indicator in India. The proprietor of the trademark has to use the Registrar of Trademarks (`Registrar`) for acquiring the trademark registration. Upon receiving the software for registration, the Registrar will publicize the trademark withinside the trademark journal.
Any individual can report opposition to the registration of the trademark posted withinside the Trademark Journal. The opposition is to be filed on the Registry of Trademarks, wherein the trademark registration application is filed. When the trademark registry gets any form of opposition to the trademark, it’ll behaviour a listening to determine the matter. The Trademark Act, 1999, and the Trade Marks Rules, 2017 offer the procedure of trademark opposition
If the Registry decides in favor of the trademark applicant, the mark will be registered and a certificate of trademark registration will be issued. If the Registrar decides in favor of the opposing party, the application for registration of the mark is considered rejected. The trademark applicant and the opposing party may be heard by the Intellectual Property Appellate Tribunal.
Initiation of Trademark Opposition
Section 21 of the Trademarks Act 1999 provides that any person may file a counter-notice with the Registry. This includes businesses, individuals, trusts, and partnerships. As a result, any aggrieved third party can object to the trademark registration.
Grounds for Trademark Opposition
The reasons that a person may object to the registration of a trademark are:
- Trademarks identical or similar to registered trademarks.
- Trademarks are descriptive.
- The trademark is devoid of distinctive character.
- Trademarks are customary in the current language or in established commercial practices.
- Trademark applications are made with malicious intent.
- Trademarks are prohibited by law or contrary to the provisions of law.
- Trademarks can confuse or mislead the public.
- The sign contains elements that can hurt the religious feelings of any division or class.
- Trademarks are prohibited under the Symbols and Names Act 1950.
Trademark Opposition Process
The procedure to object to a trademark is as follows:
Notice of Trademark Opposition
Any person may file a trademark opposition with the Registry within four months of publication of the application in the Trademark Journal by giving notice on the TM-O form and paying a fee.
The notice should contain details of the application (trademark application),
Details of the opposing party, and the grounds for the objection. The Registrar must send a copy of the Notice of Objection to the Applicant (who has filed the Trademark Application) within three months of receiving the Notice of opposition.
Counterstatement for Notice of Trademark Opposition
The claimant must file a counterstatement opposing the counter-notice with the Registry on Form TMO within two months of receipt of a copy of the counter-notice setting out its facts. The Registrar shall send a copy of the counterstatement to the opposing party within two months of receipt of the counterstatement.
Assume that the claimant does not file a counter statement within two months of receiving the counter-notice. In this case, the Registrar will consider the application to be abandoned and therefore will not proceed with the registration of the trademark.
Evidence For and Against Trademark Opposition
The opponent must provide proof of its counter-notification to the registry within less than two months of receipt of a copy of the counter-claim filed by the applicant. The opposing party must also send all copies of the evidence to the applicant.
Upon receipt of a copy of the opposing party’s evidence, the applicant must submit evidence in support of the trademark application within two months of receiving the copy of the evidence from the opposing party. applicant must submit their evidence to both the Registry and the opposing party.
The opposing party may submit additional evidence within one month of receiving a copy of the claimant’s evidence. The opposing party must submit further evidence to both the Registry and the applicant.
Hearing and Decision Concerning Trademark Opposition
The Registrar, after the receipt by both parties and in addition proof from the opposing party, will give notice to both parties of the first date of hearing If the opposing party is not present on the hearing date, the opposition can be dismissed, and the Registrar will sign in the trademark.
If the applicant is not present on the hearing date, the registration application can be handled as deserted and dismissed. The Registrar will not forget the written arguments submitted by both parties to the proceeding.
After hearing both parties and considering the evidence submitted by them, the Registrar will determine whether or not to continue with the trademark registration or reject the trademark registration application. The choice of the Registrar can be communicated to both parties in writing at the address provided by them.
Hi, I am Noorshaba Mirza and I am a self taught blogger, I am a Law student and I love writing and learning as “Learning never exhausts the mind.” and I have written many research paper. As writing express and connect to various things so never stop exploring and spreading knowledge.