TM Opposition Process

TRADEMARK OPPOSITION PROCESS

1. PUBLICATION IN TRADEMARK JOURNAL

Trademarks in India are published in a weekly journal, which is released every Monday.

2. NOTICE OF OPPOSITION (WITHIN 4 MONTHS AFTER ADVERTISEMENT)

Any individual may oppose a trademark published in the journal within four months from the date of its advertisement or re-advertisement.

3. COUNTER-STATEMENT/REPLY TO OPPOSITION NOTICE (WITHIN 2 MONTHS)

If an opposition is filed, the Registrar sends a copy of the opposition notice to the trademark applicant. The applicant must submit a counter-statement within two months from receiving the notice. If the counter-statement is not submitted within this period, the trademark application is considered abandoned as per Section 21(2) of the Trademark Act.

4. FILING OF EVIDENCE BY OPPONENT (WITHIN 2 MONTHS)

Under Rule 45, the opponent must provide evidence supporting the opposition, along with an affidavit, within two months of receiving the counter-statement. This evidence must be submitted to both the applicant’s attorney and the tribunal. Failure to submit the evidence within the prescribed timeline results in dismissal of the opposition under Section 45(2) of the Trademark Act.

5. FILING OF EVIDENCE BY APPLICANT IN SUPPORT OF COUNTER-STATEMENT (WITHIN 2 MONTHS)

In accordance with Rule 46, the applicant is required to submit evidence supporting their counter-statement within two months of receiving the opponent’s evidence. Failure to comply within the specified time results in the application being considered abandoned under Section 46(2) of the Trademark Act.

6. FILING REPLY TO COUNTER-STATEMENT EVIDENCE BY OPPONENT (WITHIN 1 MONTH)

As per Rule 47, after the applicant submits their evidence, the opponent has one month to file additional evidence in response, if needed.

7. HEARINGS (5-6)

After all evidence has been submitted, both parties present their arguments during a series of hearings before the Registrar. The Registrar then issues an order based on the proceedings.

However, the aforesaid order can be challenged by filing a review petition before the Registrar within 1 month. By filing an appeal before the respective Hon’ble High Court within 3 months from the date of communication of the order.


Evidence Stage
1. The Registrar shall ordinarily serve a copy of the counter statement to the Opponent within 2 months from the date of receipt of the same.
2. Within 2 months of receiving the counter statement, the Opponent shall file its evidence affidavit in support of opposition or a relying letter with the Trade Marks Registry and shall serve a copy to the Applicant.
3. Within the 2 months of receiving the Opponent’s affidavit, the Applicant shall file its evidence affidavit in support of application or a relying letter with the Trade Marks Registry and shall serve a copy to the Opponent.
4. In reply, the Opponent may file a rejoinder affidavit within 1 month of receiving the Applicant’s affidavit and shall serve a copy to the Applicant.

Hearing Stage
1. Thereafter, the matter is fixed for hearing before the Trade Marks Registry and both the parties are notified 1 month prior to the date of hearing.
2. After hearing the parties and considering the evidence on record, the Registrar decides whether the Trade Mark is to be accepted for Registration or not and passes an order to this effect.
3. However, the aforesaid order can be challenged by filing a review application before the Registrar within 1 month or within a further period of 1 month. If allowed by the Registrar or by filing an appeal before the respective Hon’ble High Court within 3 months from the date of communication of the order.

Conclusion
The trademark opposition process in India plays a pivotal role in safeguarding intellectual property rights while promoting transparency and fairness. By adhering to the prescribed timelines and procedures, both applicants and opponents can ensure their interests are properly represented. Understanding each step of the process is essential for navigating this intricate system effectively.