Know All About Filing Trade Mark Opposition

In the course of trademark filing process, two words that often crop up are objection and opposition. While trademark objections are raised by the examiner, the trademark opposition is raised by a third party. After the trademark has been approved by the examiner, it gets published in a journal. It is at this point that anyone can file an application for the opposition of trademark. For a person to file the trademark opposition it is not necessary to be a trademark holder nor does the person need to prove any commercial or personal interest in the matter.

Can You Oppose A Trademark Opposition?

A detailed description of the party who can oppose a trademark has been provided by Section 21 of the Trademark Act. It states that “any person” is eligible to file for the opposition, irrespective of whether he or she has a commercial or personal interest in the matter. So you could be a customer, a public interest litigator, a competitor or simply any other person. You do not need to worry about the being a bona fide party to file this opposition. Opposed to the common notions, the person need not even have a trademark registered in their name to file this kind of opposition.

Grounds for Opposition

There are several grounds based on which an opposition can be filed by the person. Some of the common grounds include absolute grounds, prohibited marks ground or relative grounds. Opposition may also be raised with regard to the proprietorship of the trademark. So, it may be said that the Indian Trademark Law has left the grounds of opposition open to the party and there are no specific grounds that you need to keep in mind.

Some of the common grounds on which trademarks are opposed are as follows:

• The trademark lacks any distinctive character and hence it is very difficult to identify.
• A similar trademark or one that is totally identical already exists. Objections may also be raised if a similar trademark has existed already.
• The trademark is objectionable in nature.
• The faith behind the registration of the application of the trademark is questionable.
• The trademark looks deceptive in nature
• The trademark is likely to create some kind of confusion.
• The trademark is not in keeping with the other laws.
• The trademark is prevented by law.
• The Emblem and Names Act, 1950 prohibits the trademark.
• The trademark contains content that hurts the religious feelings of a particular class or group.
• The trademark contains matter that hurts the image of the nation.

However, this is not an exhaustive list and there are innumerable other grounds on which the trademark can be opposed.

Time Period for Trademark Opposition

Once a new trademark is published in the Trade Mark Journal, it is open to be opposed by anyone. The time period for this opposition is three months. Under some circumstances, the time period of opposition can be extended for a maximum period of one month.

For filing your opposition, one has to approach the Trademark Registration Office and registration in no other place will be entertained. Further, the opposition cannot be directly taken to the Court or the Appellate Board (IPAB).

After the opposition has been successfully filed, the trademark will be refused registration until the matter has been resolved. However, if there are certain loopholes in the filing of the opposition, the trademark can get passed without any question.

Opposition Process for Trademarks

Within a period of four months of advertising or re-advertising of the perspective trademark in the Trademark Journal, any person can freely approach the Trademark office for opposition. Certain specifications have been given regarding the manner in which the application has to be filed along with the applicable fees. The application is known as Trademark Form 5 or TM5.

In the trademark opposition notice, the following information must be provided:

• Detailed instruction must be given regarding the trademark registration application number, the class of the goods and the services it is related to along with the name of the applicant for trademark.
• Complete details of the opposition party along with name and address.
• Grounds on which the trademark has been opposed.

After the successful filing of the opposition with the Trademark Registrar, a detailed copy of the notice must be served to the applicant. Within two months of serving the notice, the applicant is obliged to file a counter statement within a period of two months. In the case of failure to file a counter statement within the given period, the application is deemed as abandoned.

After the registrar receives both the opposition and the counter statement, the Registrar may call both the parties for hearing as per the convenience of the office. The Registrar can then make his ruling based on the evidences that is presented in front of him.