Trademark Opposition proceeding in India, though very extensive, is very interesting and fun. Before diving into the procedure of opposition proceeding, a quick run through of the general procedure of trademark filing until registration would be helpful. Once a trademark application is filed, the Registry examines the application to determine the distinctiveness of the mark. If the Examiner is satisfied that the mark is distinctive and that there are no similar marks already existing in the Trade Register, then the mark is published in the Trademarks Journal. Post such publication, the mark is open for opposition by third parties for a period of 4 months. Accordingly, if any third party opposes the mark, the opposition proceedings shall initiate and upon completion, the mark will then be registered depending on the outcome of the same. (Find the procedure from filing to registration here)

Who can oppose a trademark?

Section 21 of the Trademarks Act, 1999 says that “any person” who wants to oppose a trademark application can do so by filing a Notice of Opposition on the prescribed form along with the prescribed fee. The opponent does not necessarily have to be a registered proprietor of a trademark. He can be a purchaser, customer or a member of the public likely to use the goods. The rationale behind this is that the opponent is not only representing himself but the public at large because having two similar marks in the market can only result in confusion amongst the public at large.

Stage 1: Filing a Notice of Opposition/Filing a Counter-Statement

Within the four months post publication of the mark the Trademarks Journal (advertisement), any person can oppose a trademark by filing a Notice of Opposition by way of Form TM-O along with the prescribed fee. Essentially, a Notice of Opposition contains the application against which opposition is sought and the grounds for opposing the mark. It is first sent to the Registry for review and if all the requirements are complied with, then the Registry serves the Notice on the other party (applicant of the trademark).

Upon receipt of such Notice of Opposition, a counter-statement must be filed within the two month statutory deadline on Form TM-O along with the prescribe fee by the applicant. There is no extension to file a counter-statement which means that if the other party fails to file a counter-statement within 2 months of receiving the Notice, he shall be deemed to have abandoned his application. The counter-statement typically contains a paragraph wise counter of each of the grounds made in the Notice of Opposition. Again, it is first sent to the Registry for review and if all the requirements are complied with, then the Registry serves the counter-statement on the opponent.

Stage 2: Filing of Evidence

Rule 45 – Evidence in support of the Opposition:
Within two months of receiving the counter-statement, the opponent may provide evidence in support of his opposition in the form of an Affidavit to strengthen the case. The opponent can choose to waive filing such an Affidavit under Rule 45 if he wants to rely solely on the facts stated in the Notice of Opposition. In any case, it must be informed to the Officials of the Trademarks Registry and the other party within the prescribed time, otherwise the opposition will be treated as abandoned.

Rule 46 – Evidence in support of the Application:
Within two months of receiving the Rule 45 evidence/intimation of waiver by the opponent, the applicant should adduce evidence in support of his application. The applicant also has an option of waiving to submit any evidence and can rely on the counter-statement alone.

Rule 47 – Evidence in Reply:
Within one month of receiving the Rule 46 evidence/intimation of waiver by the applicant, the opponent again has the option to adduce more evidence in support of his opposition, if any. This provision is given so as to achieve some sort of conclusiveness in the opposition proceeding, to rebut the evidence produced by applicant and to rest their case.

Stage 3: Hearing

Upon completion of evidence submission stage, a hearing is appointed by the Registry and the parties are notified of the same. A request for adjournment can be made under Form TM-M, at least 3 days prior to the hearing date. Further, the maximum number of adjournments that can be requested by a party are restricted to 2 and the duration of each of such adjournment are restricted to not more than 30 days.

The Registrar shall upon hearing both the parties and reviewing the evidence submitted determine on whether the trademark shall be registered or not thereby bringing the opposition proceeding to a conclusion. However, the party aggrieved by the Registrar’s decision may challenge the same by filing an appeal before the Intellectual Property Appellate Board.

Roadblocks to the opposition proceeding?

Registering a trademark in India takes a considerable amount of time, and God forbid, if your mark gets opposed by a third party, then inevitably, it takes a lot more time. While there is a structured procedure for the opposition proceeding, delays are still caused due to several reasons such as not following the set procedure. There is currently so much delay because the Indian Registry is in the process of digitizing everything under the sun! So, all we need to be is patient because the result of the wait will be fruitful or at least, let’s be hopeful!

This article has been authored by Durga Bhatt, an IP Law practitioner.