Trademark Opposition Reply @ ₹3,499 + Govt. Fee | Process & Requirements
Support@professionalutilities.com                                                                                    Call Us @ +91 9716711090

Trademark Opposition

  1.   Free Expert Guidance
  2.   Money Back Guarantee
  3.   Complete Online Process
  4.   Easy EMI options available

Request a Call Back

Trademark Opposition - Procedure, Documents Required, Fees

Updated on June 18, 2021 04:17:36 PM

Trademark opposition or Trademark opposed is an “opposition” raised by a third party against the Trademark application within four months from the date of advertisement in the Trademark Journal.

Any person can raise a Trademark Opposition after publishing in the Trademark Journal for various reasons. The reason possibly could be regarding proprietorship of the Trademark, pre-existence of the Trademark, being descriptive in nature, or could be anything specified under the Trade Marks Act of 1999.


Trademark Opposition Sample

opposition sample
rectification sample

Benefits of Trademark Opposition


Benefits of Opposition

Some of you might think how getting opposed or opposing something is beneficial for you. How could this process of publication in Trademark Journal for trademark registration benefit us? Let us answer your queries about this.

  1. Publication in Journal increases the popularity of a trademark in the target audience. We can say that publication in a Journal is an advertisement to the consumers or general public about the brand and the goods & services it provides.
  2. This gives the registered trademark owners a fair chance to oppose the similar or identical trademarks, which could create problems in the near future.
  3. This also creates a sense of clarity among the general public who might be confused due to similar trademarks.

Who can file Trademark Opposition?


As per Section 21 in The Trade Marks Act, 1999, “Any person may, within four months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on an application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.”

In simple terms, anyone may file opposition for the trademark if they find that trademark in anyhow manner similar to their trademark or believes that the trademark should not be registered on any other valid legal ground. If more than one person has the same issue against the particular trademark, they can collectively take part against that particular trademark registration. For example, if someone applies for trademarking the word “DELHI”, a collective opposition could be raised against the trademark registration from various individuals, groups, societies, etc.

Grounds of Trademark Opposition


Anyone can file opposition against a trademark, but they should know the grounds on which trademark opposition can be raised. There are several grounds on which trademark Opposition can be filed:

  1. If the trademark is similar or identical to an earlier or existing registered trademark
  2. If the mark is devoid of distinctive character
  3. If the mark is descriptive in nature
  4. If the application for the trademark is made with bad faith
  5. If the mark is customary in the current language or the established practices of business
  6. If the trademark is likely to deceive the public or cause confusion
  7. If the mark is contrary to the law or is prevented by law
  8. If the trademark is prohibited under the Emblem and Names Act, 1950
  9. If the mark contains matters that are likely to hurt religious feelings of any class or section of people

Raising Trademark Opposition VS Counter-Statement for Trademark Opposition


Some people get confused between the two terms: ' Raising a trademark opposition' and 'counter-statement for trademark opposition,' and consider them one thing. But in reality, both the terms are different and require different sets of actions in legal terms.

Raising Opposition for Trademark means you want to file an opposition against the trademark published in the journal, whereas

Counter-Statement for Trademark opposition means that a third party has raised opposition against the trademark you are trying to register. Now you have to respond to the registrar with a pointwise reply in support of your trademark's authenticity.

But one thing that is common in both of them is that you require proper paperwork and a good understanding of legal terminology to file any of them.

It is advisable to seek help of legal experts for drafting and filing Trademark Opposition or Counter-statement. Our legal experts at Professional Utilities can help you raise or reply to Trademark Opposition.

Request a Call Back

Documents required for Trademark opposition


For Reply to Trademark Opposition For Raising Trademark Opposition
Details of applicant Name, address, the nationality of the applicant. Body corporate/others need to provide the following details along with the registration certificate. Name, address, the nationality of the applicant. Body corporate/others need to provide the following details along with the registration certificate.
Power of attorney It allows the attorney to take any action on behalf of an applicant. It allows the attorney to take any action on behalf of an applicant.
Affidavit - Affidavit contains the basic information about the trademark and its user.
Details of the opposed mark - Details should be provided against which the opposition is to be filed. It must explain the name and basic grounds for filing an opposition.
Verification of drafting of trademark opposition has to be made by the applicant.

How to Raise Trademark Opposition?


How to Raise Trademark Opposition

Raising an opposition against a trademark requires a notice of trademark opposition filed by any individual/company within 4 months of the date of advertisement or re-advertisement of the trademark in the Trademark Journal. A Form TM-O is required to be filled in a prescribed manner along with the application charges of Rs. 2,700/-. The trademark opposition notice must contain the following details:

  1. The grounds on which you are raising opposition to the trademark
  2. Details of the trademark for which you are raising opposition. Details must include trademark registration application number, class of goods or services for which trademark registration application was published along with the name of the applicant of the trademark application
  3. Details of the individual/company's name and address

Trademark Opposition

Process of Trademark Opposition Reply


Filing a counter-statement means that someone has already raised opposition against the trademark, and now you have to reply to them legally. The registrar had sent you the notice of trademark opposition.

1. Evidence phase
  1. A counter-statement must be filed within two months or 60 days from the date of the receipt by the Applicant of notice of opposition from the Registrar. The Applicant for trademark registration must have to file a counter-statement within 2 months from the date of notice of opposition. If they fail to do so then the trademark could be refused. The Counter-statement is first sent to the Registrar and if all the formalities are fulfilled then it is then sent to the individual/company who had filed for the opposition.
  2. Now after receiving counter-statement, a time period of two months is given to the individual/company for providing evidence in support of their opposition in form of an affidavit to strengthen the case, if they wish so. The opposing individual can choose not to file evidence and rely on the facts that they stated in the notice of opposition. But, they need to inform the registrar about whatever decision they take otherwise the opposition will be tagged as refused.
  3. If the opposing individual/company provides evidence to the counter-statement then, the applicant has to file evidence in support of their counter-statement with the duration of two months of receiving evidence from the opposition through the registrar. The Applicant also has the option to waive his right to submit any evidence.
  4. If the applicant provides evidence then the opposing individual/company has the option to file any additional evidence in support of their opposition. Opposing individuals/companies have to reply or file evidence within one month of receiving evidence of counter-statement by the applicant of trademark.
2. Hearing phase
  1. After the completion of the evidence phase, a hearing is conducted and both the parties (applicant for trademark and opposing individual/company) are notified at least one month prior to the hearing. The decision for accepting or rejecting a trademark is to be made by the Registrar only.

It is important to know that this will only prevent the applicant of the trademark from registering the Trademark. However, in order to prevent the applicant from using the trademark, a case of infringement is to be filed in an appropriate court of law.

Why Professional Utilities?


Complete Digital Process

Complete Digital Process

Free Expert Assistance

Free Expert
Assistance

Best Price Guarantee

Best Price
Guarantee

4.9/5 Google Rating

4.9/5 Google Rating (246 Reviews)

Money Back Guarantee

Money Back
Guarantee

Simple & Fast Process

Simple & Fast
Process

Frequently Asked Questions (FAQs)


 How do you fight a trademark opposition?

You can fight a trademark opposition by filing well drafted point-wise counter-statement, evidence and hearing in the court.

 When you can file a trademark opposition?

Within the time period of 4 months from the date of publication of the trademark in Trademark journal, you can file an opposition.

 How do I file a notice of trademark opposition?

An affidavit along with some of your personal details is required to file a notice of trademark opposition.Trademark Form TM-O is required to be filed for Trademark opposition.

 How long is the opposition period for the trademark?

Opposition period for the trademark is 4 months from the date of advertisement in the Trademark Journal.

 How much does it cost to file a trademark opposition?

The statutory fees for filing opposition and counter statement is Rs. 3000 for physical filing and Rs. 2700 for online filing. Moreover, it is pertinent to mention that the aforementioned fees shall have to be paid for every single opposition and also for filing counter statements to every single opposition.

 Can a trademark be opposed after registration?

Yes, a trademark can be opposed after registration. It is termed as rectification filed.