Trademark Opposition

What is Trademark Opposition?

Trademark opposition is a legal process where one party tries to prevent a trademark application from being approved because they believe that its registration may harm their rights. The registration process usually takes up to two years and all new applications are advertised in a government journal, which helps the party become aware of the trademark.

Section 21 of the Trademarks Act, 1999 covers what happens in case someone opposes the registration of a trademark. Here is the procedure to be followed:
a) The opposition has to be made in writing, in the form of a notice, to the Registrar of Trade Mark within 4 months of advertisement of the trademark registration.
b) The Registrar will pass on this notice to the Applicant.

Who can apply for Trademark Opposition Proceeding?

Under Section 21 of the Trademark Act 1999, any person can file a notice of opposition. This includes legal entities such as companies, partnership firms, LLPs, private companies, and businesses, whether Indian or foreign. Members of the public or competitors can also file trademark oppositions. If two or more people have similar issues with a trademark, they can join together as opponents. Those who can file a trademark opposition include the owner of an earlier trademark application or registration comprising a similar trademark for similar goods, as well as a person who has used the same or a similar trademark earlier to the client but has not registered their trademark.

Rietway Consultants Trademark Opposition Package

The Services which are included in our package are as Follows:
✅ Consultation
✅ Drafting of Letter
✅ Opposition Filing
✅Paying Government Fees

What are the Grounds of Trademark Opposition?

The grounds for filing a Trademark Opposition in India can vary depending on each case’s facts and circumstances. Some of the common grounds are:

  • The trademark is identical or similar to an already registered trademark.
  • The mark consists primarily of a surname.
  • The trademark is a common term for the associated goods or services in any language.
  • The trademark application has been made in bad faith.
  • The mark is merely descriptive.
  • The mark is against the law or restricted by law.
  • The trademark is scandalous, offensive or unethical.
  • The trademark is prohibited under the Emblem and Names Act, 1950.
  • The mark comprises matter that may hurt the religious sentiments of a particular group.
  • The mark is confusing with another trademark, official mark, Olympic mark or a geographical indication registered in India.
  • Another party has previously used the mark or a confusingly similar mark in India.
  • The trademark lacks distinctive character.
  • The trademark is likely to deceive the public or cause confusion.

Benefits of filing Trademark Opposition

Trademark opposition is a powerful remedy for registered trademark owners to protect their brand from any potential confusion or dilution caused by other marks.

It is crucial to seek public consultation on the registrability of a trademark as the brand is built upon public demand and popularity.

FAQ on Trademark Opposition?

Q1. What is Notice of Opposition?
Any individual who thinks his/her brand name or reputation of the company may be damaged in any way by the registration of a certain mark may choose to oppose such registration by filing the notice of opposition.

Q2. What is the Time Limit to File is Notice of Opposition?
The notice of opposition can be filed within three months, extendable by one month (3+1) from the date on which the trademark was published in the Trade Marks Journal. If the notice of opposition is filed after three months but before the expiry of four months, then it must be accompanied by a request for an extension by one month, giving sufficient reasons for the delay in filing the opposition.

Q3. Who can File Notice of Opposition?
The notice of opposition can be filed within three months, extendable by one month (3+1) from the date on which the trademark was published in the Trade Marks Journal. If the notice of opposition is filed after three months but before the expiry of four months, then it must be accompanied by a request for an extension by one month, giving sufficient reasons for the delay in filing the opposition.