In India, trademark opposition occurs after the registrar has accepted the trademark application on the basis of uniqueness and published the trademark of the third-party opposition in the journal.
In India, who can object to a trademark application?
During the trademark application stage, anybody can object to a trademark application submitted by an applicant for a variety of reasons.
Trademark Opposition Process
What is the trademark opposition process like?
- Notice of Opposition – Within four months of the initial date of appearance on the trademark journal, anybody can submit a notice of objection on a trademark. It must be submitted in the required way on Trademark Form 5 and with the appropriate fees.
- Counter-Statement – The trademark registrar will serve a copy of the trademark opposition notice to the trademark applicant when the trademark opposition notice is filed with the trademark registrar. The trademark applicant must file a rebuttal statement within two months after receiving the objection notice. The trademark application will be “abandoned” if the trademark applicant fails to file the counter statement within the stipulated time frame. It is, nevertheless, important to comprehend the state of trademark registration.
- Hearing – After the evidence filing stage is completed, the registrar will send notices to both parties announcing the hearing date, which must be at least one month after the first notice. The hearing is based on the opposition notice, counter-statement filing, and evidence submitted. The registrar hears the case, and if one of the parties fails to appear at the hearing, the registrar will rule against him.
- Appeals – The registrar decides whether the opposition was successful and, as a result, whether the trademark should be registered or not based on a study of the material provided and a hearing of both parties. However, a party that is dissatisfied with the registrar’s judgement may file an appeal with the Intellectual Property Appellate Board.
- Time Limit for Trademark Opposition – For three months after the trademark advertisement in the Trade Marks Journal, anybody can object to the trademark registration (which may be extended by a period not exceeding one month). Trademark opposition filings may only be done at the Trademark Registrar’s office; they cannot be submitted to a Court or an Appellate Board immediately (IPAB).
If a trademark objection is successful, the trademark’s registration will be denied. The brand will be registered if the trademark opposition application is denied.
Who can oppose a Trademark Application in India?
‘Any individual,’ according to Section 21 of the Trademark Act, can challenge a trademark, regardless of whether he has a business or personal stake in the subject.
A trademark can be challenged by a consumer, a member of the general public, a rival, or anybody else. In addition, the individual submitting the trademark opposition must have previously owned a registered trademark.
Who makes the decision on whether a trademark should be registered or abandoned?
Following the filing of a trademark opposition, both parties must decide whether the trademark should be abandoned or registered. The right to file an opposition, on the other hand, is unrestricted. Anyone who feels the published mark may cause public misunderstanding can submit an objection, while the trademark registrant is responsible for defending the mark.
Why does a Trademark get opposition?
A trademark opposition can be filed under a variety of sections, including absolute grounds, relative grounds, banned marks, and even the proprietorship of the challenged brand.
There are no explicit grounds for objection in Indian trademark law. The following are some of the reasons why a trademark opposition may be opposed:
- The trademark is confusingly similar to or identical to an already registered trademark.
- The trademark has no distinguishing features.
- The trademark is self-explanatory.
- The application for trademark registration is made in ill faith.
- The trademark is common in today’s terminology and/or in a company’s established procedures.
- The trademark is likely to deceive or confuse the public.
- The trademark is illegal or is prohibited by law.
- The Emblem and Names Act of 1950 makes the trademark illegal.
- The trademark contains material that is likely to offend the religious sentiments of any group or part of the population.
The opponent must submit TM-5 in order to oppose a trademark application. The trademark opposition must be submitted with the relevant trademark office, according to the application. The following information must be included on the TM-5 form:
1. Number of the contested application
2. From the trademark application, a description of the products or services is given.
3. The name of the trademark applicant who is being challenged.
Information on the Opposing Party
If the trademark owner of an earlier mark files an opposition: Name and address of the trademark owner, as well as a statement that he is the owner of the trademark in question.
If a trademark licensee files the objection, provide the trademark licensee’s name and address, as well as a statement that he or she has been allowed to file the opposition.
If a successor files an opposition to a registered trademark owner, the successor’s name and address, as well as a date on which the new proprietor’s application for registration was received by the appropriate office, or, if this information is unavailable, an indication of the date on which the new proprietor’s application for registration was received by the appropriate office, were sent to the appropriate office.
If an opposition party from outside India files, provide the name and address of the opposing party, as well as the address of India’s service.
The trademark opponent or an authorized person who is acquainted with the case’s facts should sign the notice of the opposition.
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