Trademark Opposition in India | Taaza Private Limited Company

Protect your trademark effectively with expert opposition services from Taaza Private Limited Company. Trademark opposition is a crucial legal procedure that helps maintain the integrity of your brand by preventing the registration of marks that may cause confusion, dilute your brand’s identity, or infringe on your rights.

What is Trademark Opposition?

Trademark opposition is a formal legal process available to third parties who wish to challenge the registration of a trademark after it has been published in the official Trademark Journal. Once a trademark application clears the initial examination, it is published to allow others to object if they believe the mark is too similar to their own or violates trademark laws.

Opposition gives concerned parties the opportunity to raise their objections and prevent potentially conflicting or infringing trademarks from entering the market. It is a vital tool to protect your brand’s distinctiveness and market reputation.

Why is Trademark Opposition Important?

Trademark opposition safeguards the marketplace by ensuring:

• Protection of existing trademark rights: Prevents unauthorized use or registration of confusingly similar marks.

• Avoidance of consumer confusion: Protects buyers from being misled about the source or origin of products and services.

• Preservation of unique and valid trademarks: Ensures only distinctive marks are registered.

• Fair competition: Stops the registration of marks that could unfairly benefit from another brand’s goodwill or reputation.

Who Can File a Trademark Opposition and When?

The right to file opposition extends broadly to:

• Any person or entity — This includes individuals, companies, trusts, partnerships, and other legal bodies.

• Prior users — Those who have used the mark earlier in commerce.

• Registered trademark owners — Those who own similar or identical marks.

• Competitors and industry participants — Who stand to be harmed by confusingly similar marks.

• General public or watchdogs — Concerned with misleading or offensive trademarks.

When to File:
Opposition must be filed within four months from the date the trademark application is published in the Trademark Journal. It cannot be filed before publication.

Grounds for Trademark Opposition

Opposition is generally based on absolute and relative grounds specified under the Indian Trade Marks Act, 1999.

Absolute Grounds for Refusal (Section 9)

• Lack of Distinctiveness: The mark must uniquely identify goods or services. Generic or overly descriptive marks are not registrable.

• Descriptive Marks: Marks that only describe goods/services without uniqueness (e.g., “Chocolate Biscuits” for biscuits) can be opposed.

• Bad Faith Applications: Marks filed to damage competitors or exploit famous brands can be challenged.

• Legal Prohibitions: Offensive, immoral, or scandalous marks are not allowed.

• Likelihood of Deception: Marks that mislead consumers about the quality, origin, or nature of goods/services can be opposed.

Relative Grounds for Refusal (Section 11)

• Similarity to Existing Marks: If the mark is identical or confusingly similar to an earlier mark used on similar goods/services, it can be opposed.

• Likelihood of Confusion: The public must not be confused or deceived regarding the source of goods or services.

• Protection of Well-Known Marks: Even if goods/services differ, marks that take unfair advantage of or harm the reputation of famous marks can be opposed.

• Prevention by Other Laws: Use of the mark may be barred by laws such as passing off or copyright infringement.

• Consent of Earlier Owner: Registration may proceed if consent is obtained from the owner of the earlier trademark.

Documents Required for Trademark Opposition

To initiate an opposition, the following documents are necessary:

• Notice of Opposition (Form TM-O): The official form stating opposition grounds.

• Application Details: Information on the trademark being opposed.

• Grounds for Opposition: Clear reasons supported by evidence.

• Applicant and Opponent Information: Details of both parties.

• Evidence:

  • Affidavits supporting opposition claims.

  • Proof of prior use (invoices, ads, packaging).

  • Copies of prior registration certificates.

• Power of Attorney: If an attorney represents the opponent.

• Fees: Payment of prescribed filing fees.

Mode of Filing a Trademark Opposition Application

A Trademark Opposition (Form TM-O) must be filed within four months from the date the trademark application is published in the official Trademarks Journal. Timely filing is crucial to ensure your opposition is considered valid.

There are two modes of filing:

1. E-filing (Online Filing)

• Opposition notices and supporting documents can be submitted through the Indian Trademark Registry’s online portal.

• E-filing is the preferred method due to its convenience, faster processing times, and cost-effectiveness.

• Typically, the government fees are lower for online filings compared to physical submissions.

• To file online, you must register on the IP India portal and have a Class 3 Digital Signature Certificate (DSC) to authenticate submissions.

• E-filing reduces paperwork and allows real-time tracking of the application status.

2. Offline Filing (Physical Filing)

• The opposition can also be filed physically by submitting Form TM-O and all necessary documents in person at the nearest Trademark Registry Office.

• Offline filing usually incurs higher government fees compared to e-filing.

• After submission, the applicant may have to wait longer for acknowledgment due to manual processing.

• This method is useful if the filer faces technical issues or lacks access to the digital platform.

Trademark Opposition Procedure in India

The opposition process involves several sequential steps:

Step 1: Filing Notice of Trademark Opposition

• Any person can file a Notice of Opposition in Form TM-O within 4 months from the date of publication of the trademark application.

• The notice should clearly mention:

  • Trademark application details.

  • Opponent’s details.

  • Grounds for opposition.

• The Registrar serves a copy of the opposition notice to the trademark applicant.

Step 2: Filing Counterstatement by the Applicant

• The trademark applicant must file a counterstatement within 2 months of receiving the opposition notice.

• The counterstatement should address each ground of opposition with facts and evidence.

• Failure to file a counterstatement within the prescribed time results in the application being treated as abandoned.

Step 3: Submission of Evidence

• The opponent submits evidence supporting the opposition within 2 months of receiving the applicant’s counterstatement.

• Copies of the evidence are also sent to the applicant.

• The applicant then submits their evidence supporting trademark registration within 2 months of receiving the opponent’s evidence.

• The opponent may submit further evidence within 1 month after receiving the applicant’s evidence.

Step 4: Hearing and Final Decision

• After evidence submission, the Registrar schedules a hearing and notifies both parties.

• If the opponent fails to appear, the opposition is dismissed, and the trademark may be registered.

• If the applicant fails to appear, the application is considered abandoned.

• The Registrar considers all evidence and arguments before making a decision.

• The decision, whether to accept or reject the trademark application, is communicated in writing to both parties.

Forms for Trademark Opposition

Form TM-O

• Used to initiate trademark opposition.

• Must be filed within four months of the trademark’s advertisement in the Trademarks Journal.

• Contains details of the trademark, opponent, and grounds for opposition.

• Requires prescribed fees depending on the number of classes involved.

Form TM-M

• Used for ancillary requests during the opposition process, such as:

  • Requesting expedited processing.

  • Applying for extensions of time.

  • Rectification or amendments related to trademark applications or registrations.

• Only one request can be made per form.

Costs Involved in Trademark Opposition Proceedings

1. Official Government Fees

• Filing Notice of Opposition: ₹2,700 per class of goods or services.

• Filing Counterstatement: ₹2,700 per class.

• Filing evidence via affidavit: No government fee.

2. Professional Fees for Trademark Attorney

• Attorney fees vary widely, typically from ₹5,000 to ₹50,000 or more.

• The cost depends on:

  • Complexity of the case.

  • Duration of proceedings.

  • Experience of the legal professional.

• Many sources estimate average fees around ₹5,000 to ₹15,000.

3. Other Potential Costs

• Evidence collection expenses.

• Fees for expert witnesses if applicable.

• Litigation-related costs if the case escalates to court.

• Potential reimbursement of opponent’s costs if opposition is unsuccessful.

How to Defend Against a Trademark Opposition

To successfully defend your trademark application, follow these steps:

1. Understand the Opposition

• Carefully review the opposition notice to identify the exact grounds cited.

• Research the opponent’s background, business, and interests.

2. Build a Strong Defense

• Gather compelling evidence supporting your trademark’s:

  • Distinctiveness.

  • Prior use.

  • Market presence.

• Evidence may include sales invoices, advertisements, customer testimonials, product packaging, and registrations.

• File a detailed and well-argued counterstatement addressing each opposition point.

• Prepare to participate in hearings, presenting your case clearly and professionally.

3. Manage the Process

• Seek expert legal advice from a qualified trademark attorney.

• Consider settlement discussions to avoid prolonged disputes.

• If unfavorable decisions are made, be prepared to appeal to higher authorities.

What Happens After the Registrar’s Decision on a Trademark Application?

Once the Registrar of Trademarks makes a decision on your trademark application, there are generally three possible outcomes:

1. Trademark Application is Refused

• Review Petition: The applicant has the right to file a review petition with the Registrar within 30 days of receiving the refusal notice.

• Appeal: If the review petition is denied or the applicant prefers, they can file an appeal with the Intellectual Property Appellate Board (IPAB) or the High Court within 3 months from the refusal order.

• Grounds for Refusal: The Registrar provides clear reasons for the refusal, enabling the applicant to understand the objections and potentially prepare arguments or evidence to overcome them during review or appeal.

2. Trademark Proceeds to Registration

• Advertisement in the Trademark Journal: If accepted, the trademark is published for public information in the official Trade Marks Journal.

• Opposition Period: A statutory period is provided during which third parties can file oppositions to challenge the registration.

• Registration: If no opposition is filed, or if opposition fails, the trademark is registered, granting full legal protection to the applicant.

3. Challenging the Registrar’s Decision

• Appeal: Applicants dissatisfied with the Registrar’s final decision can appeal to the IPAB or directly to the High Court.

• Time Limits: Appeals must adhere to strict deadlines (generally within three months of the decision).

• Presentation: Appeals require submission of legal arguments and evidence to justify overturning the Registrar’s decision.

Trademark Opposition vs Objection vs Rectification: Key Differences