A counter statement or reply to the notice of opposition must be filed by the applicant within two months of receipt of the notice of opposition by way of Form TM-O along with the prescribe fee of INR 2700. Even for counter statements, the fee incurred shall be with respect to each class to which the counter is being filed.

The counter statement shall typically comprise the following:

  1. Set out the facts, if any facts alleged in the notice of opposition are admitted 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 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.
  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.

The Trademark Rules 2017 has in order to expedite the opposition proceedings provided for the following changes namely:

  1. The applicant can file the counter statement on the basis of the notice of opposition uploaded on the Trademark Registry’s website. In such 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.

Accordingly, 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 evidence stage.

For more information on filing a counter statement on opposed trademark in India, please email us to info@selvams.com.