An objection submitted by a third party against the registration of a trademark that has been accepted and published in the Trademark Journal is known as a trademark opposition. Any interested party has four months from the date of publication of the trademark advertisement in the trademark journal to file an opposition.
When a trademark is challenged, what happens next?
The trademark registrar would serve a copy of the trademark notice of opposition to the trademark applicant after the trademark notice of opposition was filed with the registrar. The trademark applicant must file the counter statement within two months of receiving the notice of opposition.
The Trademarks Act, 1999, provides for the registration of a trademark in India. The owner of the trademark has to apply to the Registrar of Trademarks (‘Registrar’) for obtaining the trademark registration. Upon receiving the application for registration, the Registrar will advertise the trademark in the trademark journal.
Any person can file an opposition for registration of the trademark published in the Trademark Journal. The opposition is to be filed to the Registry of Trademarks, where the trademark registration application is filed. When the trademark registry receives any kind of opposition to the trademark, it will conduct a hearing to decide the matter.
The Trademark Act, 1999 and the Trade Marks Rules, 2017 provides the process of trademark opposition.
Initiation of Trademark Opposition
Section 21 of the Trademarks Act, 1999, provides that any person can file a notice of opposition to the Registrar. This includes companies, individuals, trusts and partnership firms. Thus, any aggrieved third party can raise opposition to trademark registration.
Grounds for Trademark Opposition
The grounds on which a person can file opposition for trademark registration are:
The trademark is identical or similar to an already existing registered trademark.
The trademark is descriptive in nature.
The trademark is devoid of distinctive character.
The trademark is customary in the present language or the established practices of business.
The application for trademark registration is made with bad faith.
The mark is prevented by law or contrary to the law.
The trademark is likely to cause confusion or deceive the public.
The trademark contains matters likely to hurt the religious feelings of any section or class of people.
The trademark is prohibited as per the Emblem and Names Act, 1950.
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.
