Trademark opposition proceedings in India

Before diving into the procedure of trademark opposition proceeding in India, 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 accepted and published in the Trademarks Journal. Post such publication, the mark is open for opposition by third parties for a period of 4 months. The party who files the application is referred to as the Applicant.

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 party who files the notice of opposition is referred to as the Opponent. 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 or services. 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.

Notice of Opposition

Within the 4-month period after the publication/advertisement of the mark in the Trademarks Journal, any person can oppose the trademark application in India by filing a Notice of Opposition on the prescribed Form TM-O along with the prescribed fee of INR 2700 per class. Where a notice of opposition has been against a multiclass application, the opponent is required to specify each class it wishes to oppose. Each class would incur the above-mentioned fee of INR 2700.

The Notice of Opposition primarily comprises of the following:

1. The application number against which opposition is sought.
2. An indication of the goods or services listed in the trademark application against which opposition is sought.
3. The name of the applicant for the trademark.
4. The Opponent’s name and address along with details of his trademark/rights if any.
5. 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.
6. If the opposition is based on an earlier trademark, a statement to that effect and an indication of the status, application number and the filing date, including the priority date of the earlier trademark.
7. If the earlier trademark is a well-known mark, a description to that effect along with the details of the country or countries in which the earlier trademark is recognized to be well known along with details of the earlier mark.
8. The grounds on which the opposition is based.
9. The notice of opposition shall be verified at the foot by the opponent or by his duly authorized agent who shall specifically state, referring to the numbered paragraphs of the notice of opposition, what he verifies of his own knowledge and what he verifies upon information received and believed to be true.
10. The verification shall be signed by the person making it and shall state the date on which and the place at which it was signed.

Upon review and compliance of the necessary formalities, the registrar shall serve a copy of the notice of opposition on the applicant of the trademark application within three months of the date of receipt after which the opposition proceeds to the stage of the Applicant filing the Counter-Statement.

Counter-Statement

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 prescribed 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. Under current practices, the official fee is payable against each Counter-Statement to be filed, irrespective of the number of classes that have been opposed in any single Notice of Opposition.

For example, if an Opponent files an Opposition against 3 classes of the same application under one Notice of Opposition (thereby generating only one Opposition Number), the Opponent would be due to pay an official fee of INR 8100, whereas the Applicant would only have to incur the official fee of INR 2700.

The Counter-Statement primarily comprises of the following:

1. Sets out the facts, if any facts alleged in the notice of opposition are admitted or refuted by the Applicant.
2. A paragraph wise counter of each of the grounds made in the notice of opposition.
3. The counter-statement shall be verified at the foot by the Applicant or by his duly authorized agent who shall specifically state, referring to the numbered paragraphs of the notice of the Counter-Statement, what he/she verifies of his/her own knowledge and what he/she verifies upon information received and believed to be true.
4. The verification shall be signed by the person making it and shall state the date on which and the place at which it was signed.

Again, the registrar shall upon review and if all the formalities are met, serve a copy of the counter-statement on the Opponent ordinarily within two months from the date of receipt of the same.

In order to expedite the opposition proceedings amendments were made to the rules in 2017 which provided for the following changes:

1. The applicant can file the counter-statement based on the notice of opposition uploaded on the Trademark Registry’s website. In such a case, the registry dispenses with the requirement of service of a copy of the notice of opposition on the applicant.
2. The provision of filing an extension to file a counterstatement has been done away with.

As mentioned earlier, if the applicant fails to file its counter statement with two months of service of the opposition, its trademark is deemed to have been abandoned for non-prosecution. Alternatively, if the applicant files the counter-statement, the opposition will proceed to the next stage where the Opponent is to file evidence in support of the opposition.

Evidence in support of the opposition under Rule 45

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. Copies of such evidence including exhibits shall be submitted before the registrar along with a copy to the applicant. Alternatively, the opponent can choose to waive his/her right to file such an Affidavit under Rule 45 and solely rely on the facts stated in the Notice of Opposition, by filing a letter indicating this choice (a “waiver letter/letter of relying”). However, such intention should be intimated to the Registrar and to the applicant in writing within the prescribed time of two months.

If the opponent fails to submit such evidence in support of the Opposition or a waiver letter within the prescribed time of two months, the opposition is deemed to have been abandoned.

Extension of time to file the evidence in support of opposition under Rule 45 can be filed with the trademark office prior to the expiry of the deadline.

Evidence in support of the application under Rule 46

Within two months of receiving the evidence in support of the opposition under Rule 45, the applicant may provide evidence in support of his application in the form of an Affidavit to strengthen the case. Copies of such evidence including exhibits shall be submitted before the registrar along with a copy to the opponent. Alternatively, the applicant can choose to waive his/her right to file such an Affidavit under Rule 46 and solely rely on the facts stated in the counter statement by filing a waiver letter as mentioned above. However, such intention should be intimated to the Registrar and to the opponent in writing within the prescribed time of two months.

If the applicant fails to submit such evidence in support of the application or a waiver letter within the prescribed time of two months, the application is deemed to have been abandoned.

Extension of time to file the evidence in support of an application under Rule 46 can be filed with the trademark office prior to the expiry of the deadline.

Reply Evidence in support of the opposition under Rule 47

Within one month of receiving the evidence in support of the opposition under Rule 46, the opponent may file reply evidence in support of his opposition in the form of an Affidavit to rebut the submissions made by the applicant and to further strengthen the case. Copies of such evidence including exhibits shall be submitted before the registrar along with a copy to the applicant. Alternatively, the opponent can choose to waive his/her right to file such an Affidavit under Rule 47 and solely rely on the facts stated in the notice of opposition and the evidence in support of the opposition filed under Rule 45. If the opponent does not want to file any additional evidence, the same need not be intimated to the Registrar and to the opponent.

If the opponent fails to submit such evidence in support of the opposition or a waiver letter within the prescribed time of one month, the trademark office would proceed to appoint a hearing in the opposition proceedings.

Extension of time to file the reply evidence in support of opposition under Rule 47 can be filed with the trademark office prior to the expiry of the deadline.

Hearing

Upon completion of evidence submitted by both parties, the registrar shall appoint a hearing and the parties are notified of the same.

A request for adjournment of the hearing with a reasonable cause can be made by either party under Form TM-M with by the prescribed fee of INR 900, at least 3 days prior to the hearing date. Further, no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days. However, it is the discretion of the Registrar to accept such a request for an adjournment and if so accepted, the registrar shall intimate the parties accordingly. If either party does not appear for the hearing at the prescribed time, the registrar shall accordingly pass orders in favour of the other party. Such decision of the registrar shall further be communicated to the parties in writing at the address of service as provided.

However, if both the parties attend the hearing at the prescribed date and time, the Registrar shall after hearing both the parties and reviewing the evidence submitted to determine whether the trademark shall be registered or not thereby bringing the opposition proceeding to a conclusion.

Any party aggrieved by the Registrar’s decision may challenge the same by filing an appeal before the Intellectual Property Appellate Board.