Once a trademark application is filed in India, the Registry examines it to check whether the mark is distinctive and whether similar marks already exist on the Register. If the examiner is satisfied that the mark is distinctive and that there are no conflicting marks already on the Register, the mark is accepted and published in the Trade Marks Journal, which is published weekly by the Office of the Controller General of Patents, Designs and Trade Marks.
From the date of that publication, the mark is open to opposition by third parties for four months. The party who filed the application is the Applicant. The party who opposes it is the Opponent.
This guide covers the full sequence, from who can oppose through to the hearing.
Table of contents
- Who can oppose a trademark?
- Notice of Opposition
- Counter-statement
- Evidence in support of the opposition (Rule 45)
- Evidence in support of the application (Rule 46)
- Reply evidence (Rule 47)
- Hearing
- Appeals
- Deadlines at a glance
- Frequently asked questions
Who can oppose a trademark?
Section 21 of the Trade Marks 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 with the prescribed fee.
The Opponent does not have to be a registered proprietor of a trademark. A purchaser, a customer, or a member of the public likely to use the goods or services can oppose. The reasoning is that the opponent is not only representing their own interest but the public at large, because two similar marks in the market can only result in confusion.
In practice most oppositions are filed by brand owners who monitor the Journal, but the threshold for standing is low.
Notice of Opposition
Within four months of the mark being advertised in the Trade Marks Journal, any person can oppose the application by filing a Notice of Opposition on Form TM-O, with a fee of INR 2,700 per class for e-filing (INR 3,000 for physical filing).
Where the opposition is against a multi-class application, the opponent must specify each class it wishes to oppose, and the fee applies to each class.
The Notice of Opposition primarily comprises the following:
- The application number against which opposition is sought.
- An indication of the goods or services listed in the application against which opposition is sought.
- The name of the applicant for the trademark.
- The Opponent’s name and address, along with details of their trademark or rights, if any.
- If the Opponent has no place of business in India, the name of the Opponent’s legal counsel and their address for service in India.
- If the opposition is based on an earlier trademark, a statement to that effect and an indication of the status, application number and filing date, including the priority date, of the earlier mark.
- If the earlier trademark is a well-known mark, a description to that effect along with details of the country or countries in which it is recognised as well known.
- The grounds on which the opposition is based.
The Notice must be verified at the foot by the opponent or their duly authorised agent, who states, referring to the numbered paragraphs, what is verified from their own knowledge and what is verified on information received and believed to be true. The verification must be signed and must state the date and place of signing.
Once formalities are complied with, the Registrar ordinarily serves a copy of the Notice of Opposition on the applicant within three months of receipt, after which the matter proceeds to the counter-statement stage.
Watch the four-month window. It runs from the date of advertisement in the Journal, not from when you happened to notice the mark. There is no extension. If you monitor the Journal for conflicting marks, the IP India public search and the Journal archive are the two places to watch.
Counter-statement
A counter-statement, or reply to the Notice of Opposition, must be filed by the applicant within two months of receipt of the notice, on Form TM-O, with a fee of INR 2,700 per class.
The counter-statement typically comprises:
- The facts alleged in the Notice of Opposition that the applicant admits, if any.
- A paragraph-wise counter to each ground made in the Notice of Opposition.
It must be verified in the same manner as the Notice of Opposition, signed, dated and stating the place of signing.
The Registrar then serves a copy of the counter-statement on the opponent, ordinarily within two months of receipt.
The Trade Marks Rules, 2017 made two changes here to expedite proceedings:
- The applicant can file the counter-statement on the basis of the Notice of Opposition uploaded on the Registry’s website. Where this is done, the requirement of service of a copy of the notice on the applicant is dispensed with.
- The provision for filing an extension to file a counter-statement has been done away with.
This second change matters a great deal. If the applicant fails to file the counter-statement within two months, the trademark application is deemed abandoned for non-prosecution. There is no extension available. In practice this is the single most common way applicants lose marks they could have defended.
If the counter-statement is filed, the opposition proceeds to the evidence stage.
Evidence in support of the opposition (Rule 45)
Within two months from service of the counter-statement, the opponent must furnish such evidence as they wish to rely on, by way of an affidavit under Rule 45, with copies of exhibits filed before the Registrar and served on the applicant.
Alternatively, the opponent may waive the right to file evidence and rely solely on the facts stated in the Notice of Opposition. That intention must be communicated in writing to the Registrar and the applicant within the same period.
If the opponent files neither evidence nor a waiver letter within two months, the opposition is deemed abandoned.
A note on abandonment. In ACE Foods Private Limited v The Registrar of Trade Marks, the Madras High Court held that non-filing at these stages cannot result in deemed abandonment of the application or opposition automatically, finding the relevant rules ultra vires the parent Act to that extent. The position is developing, and practice at the Registry has not fully caught up. Treat the deadlines as hard, but know that a missed deadline is not always fatal.
Evidence in support of the application (Rule 46)
Within two months of receiving the opponent’s Rule 45 affidavit, or the letter waiving it, the applicant must adduce evidence in support of the application by way of an affidavit under Rule 46. Copies including exhibits go to the Registrar, with a copy to the opponent.
The applicant may equally waive this right and rely on the facts in the counter-statement and any evidence already on file, by writing to the Registrar and the opponent within the prescribed time.
If the applicant files neither evidence nor a waiver letter within two months, the application is deemed abandoned.
Reply evidence (Rule 47)
Within one month of receiving the applicant’s Rule 46 affidavit or waiver letter, the opponent may file further evidence in reply, by affidavit, including exhibits.
The purpose of this stage is to allow the opponent to rebut the applicant’s evidence and bring the evidentiary record to a close.
If any document filed during the proceedings is in a language other than Hindi or English, an attested translation must be filed with the Registrar and a copy served on the other party.
After the reply affidavit, no further evidence is permitted from either side, though the Registrar retains discretion to allow further evidence at any time.
Hearing
Once evidence is complete, the Registrar appoints a hearing and notifies the parties.
Either party may request an adjournment for reasonable cause on Form TM-M with a fee of INR 900, at least three days before the hearing date. No party is given more than two adjournments, and no adjournment exceeds thirty days. Whether to allow the request is at the Registrar’s discretion.
If a party does not appear at the appointed time, the Registrar passes orders in favour of the other party. The decision is communicated to the parties in writing at the address for service.
If both parties appear, the Registrar hears them, reviews the evidence, and determines whether the mark should be registered, concluding the opposition.
Appeals
Any party aggrieved by the Registrar’s decision may appeal.
Appeals now go to the High Court. The Intellectual Property Appellate Board (IPAB), which previously heard these appeals, was abolished by the Tribunals Reforms Act, 2021. Its functions were transferred to the High Courts, and pending matters were transferred accordingly. The Delhi High Court has since established a dedicated Intellectual Property Division with its own rules of procedure, and other High Courts have followed with varying arrangements.
If you are working from older material on Indian trademark practice, this is the most common point on which it will be out of date.
Deadlines at a glance
| Stage | Form | Deadline | Fee (e-filing) | If missed |
|---|---|---|---|---|
| Notice of Opposition | TM-O | 4 months from advertisement | INR 2,700 per class | Mark proceeds to registration |
| Counter-statement | TM-O | 2 months from service | INR 2,700 per class | Application deemed abandoned |
| Evidence supporting opposition (Rule 45) | Affidavit | 2 months from service of counter-statement | — | Opposition deemed abandoned |
| Evidence supporting application (Rule 46) | Affidavit | 2 months from Rule 45 affidavit or waiver | — | Application deemed abandoned |
| Reply evidence (Rule 47) | Affidavit | 1 month from Rule 46 affidavit or waiver | — | Evidence closes |
| Adjournment request | TM-M | 3 days before hearing | INR 900 | Hearing proceeds |
None of the evidence-stage deadlines can be extended. Where an extension is genuinely needed, the practical route is a waiver letter filed in time rather than an extension request.
Frequently asked questions
How long does a trademark opposition take in India? Anywhere from two to five years to a final decision, depending on the Registry’s backlog and how contested the evidence stages become. Oppositions that settle early move much faster.
Can an opposition be settled? Yes, and many are. Parties commonly agree that the applicant will amend the specification, restrict the goods or services, or adopt a distinguishing element, in exchange for the opponent withdrawing. A coexistence agreement is often the fastest and cheapest exit for both sides.
What happens if I miss the counter-statement deadline? The application is deemed abandoned for non-prosecution, and no extension is available. The developing case law on automatic abandonment may offer a route to revival in some circumstances, but this is contested and expensive. The reliable answer is to diarise the date from the moment the notice is served.
Do I need a registered trademark to oppose? No. Section 21 permits any person to oppose. An opposition can rest on prior use, passing off, or absolute grounds such as the mark being descriptive or deceptive, without the opponent owning any registration.
Can I oppose only some of the goods in an application? Yes. The Notice of Opposition indicates which goods or services are opposed, and in a multi-class application you specify each class opposed, paying the fee for each.
Where do appeals go now that the IPAB is abolished? To the High Court with jurisdiction. The Delhi High Court’s Intellectual Property Division is the most developed forum, but the correct court depends on where the appeal would ordinarily lie.
Useful official resources
- Trade Marks Journal — the weekly publication where advertised marks appear, and the starting point for the four-month opposition window.
- IP India public trademark search — for checking the status and details of an application or registration.
- IP India e-filing portal — where Form TM-O and other forms are filed.
- Trade Marks Act, 1999 — the governing statute, including Section 21 on opposition.
- WIPO Madrid Monitor — for international registrations designating India, where a provisional refusal may follow the same opposition route.
Facing an opposition, or considering filing one? Talk to us and we will tell you where you stand before you commit to the process.