A Trademark Opposition is an administrative proceeding before the Registrar of the trademark, wherein one party seeks to prevent another from registering a trademark. India has a trademark law based on common law principles. Indian trademark law is developed and provided with enough checks and securities to maintain the uniqueness of the marks registered in the registry and to protect the creator's rights from getting infringed. The Trademark Act of 1999 provides for three-tier security for the trademark registration. Firstly, in the registration office itself where the official checks the mark and asses its uniqueness and only approve if he doesn't find a similar one already registered in the existing database of the registry.
Secondly, if by any chance he fails to check it properly and allow it to be registered, the mark first will be published in the Trade Marks Journal, published from time to time, normally on a weekly basis, the official website of the Registrar of Trademarks. After the publication of such marks, one can file an opposition against subject trademark, stating their objections, as provided under Section 21 of The Trademark Act 1999. A time limit of three months is allowed for initiating trademark opposition proceeding after it appears on the journal for the first time; however that can be extended to a maximum of four months whatsoever. once opposed the trademark application status will reflect as 'Opposed' and Registrar will be open to take evidence as well as hear the party's contentions to decide further.
Who Can Initiate Trademark Opposition Proceeding In India?
Section 21 of the Trademarks Act, 1999 states that 'any person' can file the notice of opposition, that includes any natural or legal person like companies, partnership firms etc. Trademark opposition filing can be filed by an Indian or foreign customer, member of the public or competitor or any other person. In fact, if two or more persons have the same issues against a trademark, they can be joined together as opponents.
However, generally the following persons file a trademark opposition:
Already Registered-The owner of an earlier trademark application or registration covering a similar Trademark for similar goods.
Prior User- A person who has used the same or a similar trademark prior to the client, but who haven't registered his trademark.
What are the different grounds for initiating a Trademark Opposition proceeding in India?
The grounds and reasons available for filing a TM Opposition in India will depend on the facts and circumstances of each and every case. However, some of the basic grounds for opposing a trademark provided under the trademark act of 1999 are as follows:
The trademark is similar or identical to an earlier or existing registered trademark.
The mark is not of distinctive character.
Application for the trademark is made with bad faith.
The mark is descriptive in nature.
The trademark is likely to deceive the public or cause confusion.
The mark contains matters that are likely to hurt religious feelings of any class or section of people.
The trademark is prohibited under the Emblem and Names Act, 1950
The mark is contrary to the law or is prevented by law
What Is The Procedure of Filing Trademark Opposition In India?
The following stages are involved in the Trademark Opposition filing procedure:
Notice of Opposition:
Any person can file a notice of opposition on a trademark that appears on trademark journal within 4 months from the date of the first appearance. The opposition will be filled in the FORM TM -O, fees for filing the same is around three thousand. Initially , There were 74 different forms available for every different process, which has been amended in trademark rules in 2017, currently there are just 8 exhaustive forms covering every concerning thing. The notice of opposition has to be filed and contested at the same office or branch where the original application for trademark registration has been filed by the Applicant. The Head office of the Trade Marks Registry is at Mumbai and branch offices are at Ahmadabad, Chennai, Delhi, and Kolkata.
Rule 44of The Trademark Rules, 2017, states that after the filing of the notice of opposition, the Applicant for the registration of subject mark, can file a counter statement, in Form TM-O, within 2 months (not extendable) of the receipt of the notice of opposition. on failure of filing the counter-statement the application for registration deemed to be abandoned or deserted by the applicant and the Registrar will take it down from the journal and will not approve it for the registers. Applicant can also file the same on the basis of Electronic copy of notice made available on website of Trademarks Registry.
Producing Evidence in trademark opposition:
Evidence in Support of Opposition: Rule 45 ofThe Trademark Rules, 2017,states that the opposing party has to produce evidence to support its objection within 2 months (extendable by one month) of receiving the copy of the counter-statement filed by the applicant. The party also has the option of refraining from producing any evidence and relying solely on the opposition notice.
Evidence in Support of Application: after the opposing party files evidence in support of his objections, the applicant is also allowed a time of two months to produce evidence in his favor. He also has an option of not providing any evidence and to rely only on the counter statement as provided in Rule 46,The Trademark Rules, 2017.
Evidence in reply: Under Rule 47,The Trademark Rules, 2017, the Opponent is given one additional month (extendable by 1 month) to file Evidence in response to the Applicant's evidence.
once this phase is over parties are not allowed to adduce any further evidence. However, the Registrar can exercise his discretion to ask for more evidence subject to cost and terms. An interlocutory application needs to be filled by the concerned party for this.
# Hearing:After the evidence filing stage is over the Registrar shall give the notice to the parties stating the date of hearing, which shall be at least one month after the date of the first notice. Hearing is based on the notice of opposition, counter-statement, and evidence filed. The parties are required to notify the Registrar about their intention to appear for the hearing. There's an option of adjourning the hearing also, and the request for it can be made under FORM TM â€“M,at least 3 days prior to the hearing, however one is allowed a maximum of two times only to request for an adjournment. Finally, the matter is heard by the Registrar and decided upon merits. If any of the party doesn't show up for the hearing the Registrar will rule against his favor.
# If Appeal: The Registrar shall upon hearing both the parties and reviewing the evidence submitted decides whether the opposition succeeds at establishing their objection or failed to do so, and in turn determines whether the trademark shall be registered or not thereby bringing the opposition proceeding to a conclusion. However, the party aggrieved by the Registrar's decision may challenge the same by filing an appeal before the Intellectual Property Appellate Board.
Now in this already cumbersome process, the security checks provided in the acts become the reason for further delaying of the trademark registration which takes a minimum of 2 years to complete. once the mark is opposed it is imperative for the applicant to reply vehemently and to prepare his defense in order, it is also advisable to take experts help in the process of registering a trademark, that will help by eliminating all the chances of getting objected or rectified, and an unopposed registration is the best way out there to get the registration done easily and in time.
Professional Utilities offers a comprehensive suite of solution for protection of your trademark in India. Prior to application of the mark and post-application of the trademark, Professional Utilities can help you with consultation on protecting your mark. However, please note that the ultimate authority for registration of a mark rests only with the Trademark Registrar and Professional Utilities or its Employees can at no-stage guarantee registration of a trademark.
Prior to applying for a trademark, we can help you do a trademark search. Under the Trade Marks Act, identical or similar trademarks cannot be registered. It is easy to determine identical trademark from a trademark search. However, the test for similarity is applied by a Trademark Examiner on a case to case basis. Hence, Professional Utilities or its employees cannot predict which trademark applications will be objected.
In case a trademark application is objected by the Trademark Examiner, a reply can be submitted to the objection raised by the applicant with facts and points supporting registration of the mark. Based on the reply, the Examiner can call for hearing or allow the trademark filing to proceed or reject the trademark application
Prior to a trademark application being registered, the Trademark Registrar would publish the mark to be registered in the Trademark Journal and allow a period of 90 days for any person to raise an opposition. Professional Utilities can help you manage trademark oppositions or file an application opposing registration of any other mark published in the Trademark Journal.
What is Trademark?
Basically a trademark is a brand or a logo that you use to distinguish your product from those of your competitors. The term Trademark is the legal term for “intellectual property”. One can also say that a Trademark is typically a name, word, phrase, logo, symbol, design, image or combination of these elements. A trademark identifies the brand owner of a particular product or service.
What is the trademark Registration?
Trademark Registration is a legal procedure provided under the Trade Marks Act, 1999. Through trademark registration or you can say logo registration/brand registration, you can protect your brand or logo by restricting other people from using the same.
How much fees will I have to pay for trademark registration?
Ans: The government fees for Trademark registrations are as under:
Where the applicant is Individual/Startup/Small Enterprise the fees for E-Filing would be 4500 whereas for the physical filing fees would be 5000.
In all other cases fees for E-Filing would be 9000 and for physical filing fees would be 10000
Where should I apply for my trademark registration?
The applications for the trademark registration can be submitted personally at the Front Office Counter of the respective office or can be sent by post. These can also be filed online through the e-filing gateway available at the official website.
Is trademark registration an online process?
Yes the Trademark can be registered online through the e-filing gateway available at the official website. However, it can also be filed physically at the front office counter of the respective office or can be sent by post.
How can I check my trademark registration status?
By following the below-given steps you can Check Trademark Status
Step 1: Access IP INDIA Website.
Step 2: Select National/IRDI Number.
Step 3: Provide Trademark Application Number.
Step 4: View Trademark Application Information.
What are the documents required for trademark registration?
The most important documents for trademark registration as follows:
Soft copy of the trademark.
In the case of an individual or a HUF
Business registration document (if available).
In the case of Company/LLP
Shops Establishment License;
Certificate of Incorporation and;
Address proof of the company.
In case of Partnership firm
The Partnership Deed.
Apart from these, there are no particular documents to be filed. Different forms for different types of applications have to be filed for registration of trademarks.
What are the benefits of having your trademark registered?
The registration of a trademark confers upon the owner the exclusive right to use the trademark in relation to the goods or services in respect of which the mark is registered and to indicate so by using the symbol (R), and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar mark due to special circumstances such exclusive right does not operate against each other.
How much time will it take to get my trademark registered?
Trademark Registration is a lengthy process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, the trademark application number is usually issued within one or 2 days after filing.
What can be registered as a Trademark?
A phrase, word, symbol, device, or even color are all eligible for a trademark. Anything that distinguishes the goods of your party or company from another qualifies. However, the item must be used in a commercial setting to obtain protection from the law. Trademarks have a 10-year protection span.
What is the difference between R and TM?
The TM Symbol can generally be used by any person or business to indicate that a particular word, phrase or logo is intended to serve as an identifier for the source of that product or service. You do not have to have registered a trademark to use it and many companies will opt to use the TM symbol for new goods or services in advance of and during the application process.
The R symbol indicates that this word, phrase or logo os a registered trademark for the product or service. It must only be used in the case of registered trademarks and by the owner or licensee. It also must only be used in the regions in which you possess a valid trademark registration.
What trademarks can not be registered?
Ans: A trademark has to have one basic feature that is it should be unique and create a brand identity for a product. So if a trademark is such that does not create any brand for a product can't be trademarked. In general,
Generic words can't be trademarked. For example, you can't trademark words like TV, Fridge, scooter, car, etc.
The names of the cities and countries can not be trademarked.
The names of Gods and Goddesses and the names of religious books can not be trademarked. For example, you can't trademark *Lord Ram* or *Ramayana*
Surnames can not be trademarked under normal circumstances. For Example, you can't trademark *Sharma*
Names of Constitutional Posts or Government posts can't be trademarked. For examples, you can't trademark *Prime Minister of India
Words that denote illegal or Immoral acts can't be trademarked. For example, you can't trademark *Let's cheat* or *Let's grope*
Words that are prohibited under names and emblems act can't be trademarked. For example, you can't trademark the official sign of Government of India
What is Trademark Search?
Trademark searches refer to any action taken for the purpose of determining whether and/or a trademark is used in commerce. Trademark searches can be narrow in scope or can include results from every avenue for trademark protection for every mark is remotely similar to the mark that is the subject of the search. An appropriate search strategy will consider the nature of the mark, the nature of the goods/services the mark covers, the timeline for bringing the mark to commerce, and the applicant's allocation of resources.
What is the Trademark Watch service?
Trademark registration is a long process that has to pass through various steps. Trademark watch provides the services of keeping a close watch at each stage of the Trademark registration process and even after that and do the needful as and when needed to prevent the client from missing out on any important stage which can affect the registration of the trademark.
Where can I get the Trademark Watch services in India?
You can get the Trademark watch services at Ebizfiling. Ebizfiling Trademark watch provides the services of keeping a close watch at each stage of the Trademark registration process.