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Trademark Opposition

5450* Basic Package

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Overview

During the trademark application stage, a trademark application filed by an applicant can be obstructed by any person for various reasons. The person filing the opposition need not have any commercial or personal interest in the matter and should be a prior registered trademark owner.

Who can obstruct the trademark application:-

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.

Reason to file a Trademark opposition:-

There can be different sections under which a trademark opposition can be filed, like absolute grounds, relative ground, prohibited mark or the opening may also raise the objection with regards to the proprietorship of the trademark opposed. Though the Indian trademark law does not provide any specific grounds of opposition, there can be various reasons for which a trademark opposition can be filed.

The following are some of the various grounds for trademark opposition in India:

1) The trademark is similar or identical to an earlier or existing registered trademark.

2) The trademark is devoid of distinctive character.

3) The trademark is descriptive in nature.

4) The trademark registration application is made with bad faith.

5) The trademark is customary in the currently language and or in the established practices of a business.

6) The trademark is likely to deceive the public or cause confusion.

7) The trademark is contrary to the law or prevented by law.

8) The trademark is prohibited under the Emblem and Names Act, 1950.

9) The trademark contains matters that are likely to hurt religious feelings of any class or section of people.

Trademark Opposition process

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

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;

Details about the opposing party

1.If the opposition is filed by trademark owner of an earlier mark:  

Name and address of the trademark owner and an indication that he/she is the trademark owner of such trademark or right;

2.If the opposition is filed by a trademark licensee:   

Name and address of the trademark licensee along with an indication that he/she has been authorized to enter the opposition;

3.If the opposition is filed by a successor to the registered trademark owner:   

Name and address of the successor and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office or, where this information is not available, was sent to the appropriate office;

4.If the oppostion is filed by a party outside India:    

Name and address of the opposing party and address for service in India.

The signature of the authorised person who is acquainted with the facts of the case should be there on the trademark opposition form. The person signing should refer the date and place at which it was signed along with the numbered paragraphs of the notice of opposition

Time limitation for trademark opposition.

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.

Document Required

1. Documents required to get file opposition
  • The documents required shall be communicated having an analysis of opposition.

Time Lines

  • (10 to 15 Days)
  • Purchase the Service
  • Upload / send the Documents
  • Discussion with expert
  • Filing of application with registrar authorities
  • Receipt of acknowledgement Certificate
  • Confirmation to client

Service Covered

Pricing for what you want required service

Basic

5450*
  • Expert Consultation
  • Filing of opposition notice against filing of trademark application filed by us.

Business

6950*
  • Expert Consultation
  • Filing of opposition notice against filing of trademark application filed by Others.

Enterprise

11450*
  • Expert Consultation
  • Filing of opposition notice against filing of trademark application along with notice sent to the other trademark applicant.
  • Notes:
  • * This price is inclusive of all Govt filing fee and excluding GST amount.

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