Overview on Trademark Opposition

A trademark opposition is a formal objection raised by a third party against the registration of a trademark that has been accepted and published in the Trademark Journal. It serves as a crucial legal mechanism for businesses or individuals to prevent the registration of a trademark that they believe may infringe upon their rights or cause public confusion.

Under the Trademarks Act, 1999, any person or legal entity—even if they do not own a registered trademark—can file an opposition against a proposed trademark. This process ensures that only genuine, distinctive, and lawful trademarks are granted protection in India.

Eligibility to File a Trademark Opposition

As per Section 21 of the Trade Marks Act, 1999, any person can file a trademark opposition, regardless of whether they have a commercial interest in the matter or not.

Eligible individuals include:

• A consumer

• A member of the public

• A competitor

• A registered trademark owner

• Any person or business who believes the new trademark might cause confusion or infringe upon existing rights

Once an opposition is filed, the trademark applicant must respond within the stipulated time to defend their trademark. The outcome of this process will decide whether the mark is registered or abandoned.

Reasons to Oppose a Trademark

Although the Indian Trademark Law does not provide an exhaustive list of grounds for opposition, the following are some common reasons:

• The mark is identical or deceptively similar to an already registered trademark.

• The trademark lacks distinctiveness and cannot uniquely identify the source of goods or services.

• The mark is descriptive or directly explains the nature, quality, or value of the goods/services.

• The application was made in bad faith or with malicious intent.

• The trademark is common in current trade language or general industry practice.

• The mark is likely to confuse or mislead the general public.

• The trademark is contrary to law or includes elements that are prohibited.

• It violates provisions of the Emblems and Names (Prevention of Improper Use) Act, 1950.

• The trademark contains elements that may offend religious sentiments of any community.
  
  

Where to File a Trademark Opposition in India

The Trademark Opposition Notice must be filed with the same Trademark Registry where the original trademark application was submitted.

Example:

If the trademark application was filed at the Delhi office of the Trademark Registry, the opposition proceedings must be initiated at the Delhi office only.

What to Do If Your Trademark Status Shows "Opposed"?

If your trademark application status is marked as “Opposed,” you must file a counter-statement within 4 months (3 months + 1-month extension) from the date the opposition was published in the Trademark Journal.

Key steps to follow:

• Consult a trademark expert to draft a well-structured rebuttal.

• Submit the counter-statement within the specified period.

• If no counter-statement is filed within the deadline, the application will be automatically abandoned by the registry.
  
  
  

Trademark Opposition Procedure in India

Here's a step-by-step breakdown of the trademark opposition process:

1. Filing the Opposition Notice

• Must be filed within 4 months from the date of publication in the Trademark Journal.

• File using Form TM-O (formerly TM-5) with the applicable fees at the relevant trademark office.

• Include:

  • Details of the application being opposed

  • Prior mark or rights information

  • Opponent’s details and legal standing
    
    

2. Counter-Statement by Applicant

• Trademark applicant must file a counter-statement within 2 months of receiving the opposition notice.

• Failure to respond results in abandonment of the application.
  
  

3. Evidence Submission

• Both parties are allowed to present evidence in support of their claims and rebuttals.
  
  

4. Hearing

• The Registrar schedules a hearing after reviewing all documents and evidence.

• Both parties are notified in advance.

• Non-appearance by any party may lead to an ex-parte decision.
  
  

5. Decision and Appeals

• The Registrar delivers a verdict on whether the opposition is valid.

• If unsatisfied, either party can appeal the decision before the Intellectual Property Appellate Board (IPAB).
  
  
  

Time Limit for Filing Opposition

Trademark opposition must be filed within:

• 3 months from publication in the journal (with a 1-month extension possible).

• No opposition is accepted beyond this period.

• The opposition must be filed at the same registry where the trademark application was submitted.
  
  
  

Key Components in an Opposition Application

An opposition must include the following information:

a) Trademark Application Details

• Application number

• Goods/services related to the trademark

• Applicant’s name
  
  

b) Prior Mark or Right

• Registration or application number of the existing mark

• Country/region where the mark is considered well-known (if applicable)
  
  

c) Details of the Opponent

• Name, address, and legal interest in the matter

• If the opponent is a foreign entity, an Indian service address is required
  
  

d) Filing Form TM-5 / TM-O

The notice of opposition must be signed by:

• The opponent

• Or a legally authorized person who knows the case facts
  
  

Trademark Objection vs Trademark Opposition

What If the Trademark Status Says "Opposed"?

If your trademark status reads “Opposed,” you must:

• File a counter-statement within 2 months from the date of opposition.

• If not filed, the application will be abandoned.

• It is advisable to consult a trademark expert or lawyer to prepare your response.
  
  

Where to File a Trademark Opposition?

The Notice of Opposition must be filed at the Trademark Registry Office where the original trademark application was filed.

Example: If the trademark application was filed in the Delhi office, then the opposition proceedings must also be conducted in Delhi.

Fastzeal Support for Trademark Opposition

Fastzeal offers comprehensive support for handling trademark opposition, including:

Drafting and filing of TM-O counter statements

Legal representation by experienced attorneys

Updates on IPR developments

Format guidance for effective rebuttals

A dedicated compliance calendar for your business

Free consultation for opposition-related concerns