Trademark Opposition

According to section 21 of the Trademark Act, irrespective of commercial or personal interest in the matter, any person can file a trademark notice. The question of bona fides of the opponent does not arise. Hence a trademark obstruction can be filed by a consumer, member of the public,any opposition or any other person. In order to file a trademark opposition it is a compulsion for the person to be a prior registered trademark owner.

For instigating a trademark opposition proceedings, a notice of trademark opposition can be filed by any person within four months of the date of advertisement or re-advertisement of the application in the Trademark Journal. The trademark opposition must be on trademark form 5, in the prescribed manner along with the applicable fee, a trademark opposition notice should contain the following information:-

1) Application against which trademark opposition is entered including trademark registration application number, class of good or services for which trademark registration application was made and the name of applicant of the trademark application.

2) Details of the trademark opposition party including name and address.

3) The grounds for trademark opposition.

After the trademark opposition notice is filed with the Trademark Registrar, the registrar would provide A copy of trademark opposition notice to the trademark applicant. The trademark applicant within two months of the receipt of the trademark opposition notice has to provide a counter statement. If the trademark applicant fails to provide a counter statement the trademark would be contemplated as “abandoned”.

Once the trademark opposition filed and the counter statement filed, the registrar may call for a hearing of the parties. The registrar then has the option to rule on trademark registration application and trademark opposition filing based on the evidence presented.

Form TM-5 must be compulsorily filed by the opponent for opposing a trademark. The opposition must be filed any appropriate trademark office, as per the application. The trademark application for opposition must contain the following details:-

Details about the trademark application  

1) Impugned application number;

2) Indication of the goods or services from the trade mark application;

3) Name of the applicant for the trade mark sought to be opposed;

Once the advertisement of the trademark is done in the Trademark Journal, any person with a valid ground can oppose registration of the trademark for a period of 3 months. A person can file the opposition at the Trademark Registrar Office and cannot take the opposition directly to a court or the Appellate board (IPAB). If the trademark opposition is successful, the registration of the trademark will be refused and if the opposition application is rejected the trademark will be registered.