TRADEMARK OPPOSITION PROCESS

The trademark opposition process in India is a critical mechanism that allows individuals or entities to challenge the registration of a trademark they believe infringes on their rights or interests. This procedure, governed by the Trademark Act and corresponding rules, ensures a fair opportunity for both the applicant and the opponent to present their case. Below is a step-by-step guide outlining the timeline and key milestones in the trademark opposition process.

Step-by-Step 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 Rule 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 Rule 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.

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.