Introduction

Trademark opposition is a legal process that allows any person to dispute the registration of a trademark that appears in the trademark journal. This article outlines the steps involved in filing a trademark opposition and provides important information about the time limits, required forms, and key details to include.

Opposition Notice

Any individual can file a notice of opposition within four months after the first date of appearance of a trademark in the trademark journal. The notice must be submitted on Trademark Form 5, following the required format and payment of applicable fees.

Counter-Statement

Once the trademark opposition notice is filed with the registrar, a copy of the notice is served to the trademark applicant. The applicant is then required to file a rebuttal statement within two months of receiving the opposition notice. Failure to do so will result in the trademark application being deemed "abandoned." Therefore, it is crucial to understand the status of trademark registration during this stage.

Hearing

After the evidence filing stage, the registrar schedules a hearing by issuing notices to both parties. The hearing date must be at least one month after the initial notice. The opposition notice, counter-statement filing, and evidence submitted form the basis for the hearing. During the hearing, the registrar evaluates the arguments presented by both parties. If one party fails to appear, the registrar rules against them.

Appeals

The registrar reviews the material submitted and hears arguments from both parties before making a decision on the success of the objection and whether the trademark should be registered. If a party is dissatisfied with the registrar's judgment, they can appeal it to the Intellectual Property Appellate Board.

Trademark Opposition Time Limit

Trademark opposition can be filed within three months after the trademark advertisement in the Trade Marks Journal. This time limit can be extended by no more than one month. It is important to note that trademark opposition filings must be made directly at the Trademark Registrar's office and cannot be immediately taken to a Court or the Appellate Board (IPAB).

If a trademark objection is successful, the registration of the trademark will be denied. However, if the trademark opposition application is denied, the trademark will be registered.

Submitting an Objection to a Trademark

When submitting an objection to a trademark, the following details must be included:

1. Specifics about the trademark application:
   • Application number against which the opposition is filed
   • Indication of the goods or services included in the trademark application
   • Name of the trademark applicant
2. Details of the prior mark or right on which the objection is based:
   • Application or registration number of the prior mark, if applicable
   • Statement indicating the country or region where the previous mark is considered well-known, if applicable
3. Information about the opposing party:
   • Name and address of the owner of an earlier mark or right
   • Indication of ownership of the mark or right, if applicable
   • Name and address of the opposing party if they are the successor in title to a registered proprietor
   • Date of receipt of the new proprietor's application for registration by the appropriate office, if applicable
   • Name and address for service in India if the opposing party does not have a place of business in India

TM-5 Form

To oppose a trademark filing, the opponent must file TM-5 with the appropriate trademark office. The TM-5 form should include the following information:

1. Information about the trademark application:
   • Application number in question
   • Indication of the goods or services associated with the trademark application
   • Name of the applicant for the trademark being contested
2. Information on the opposing party:
   • Name and address of the trademark owner, along with evidence of ownership, if the opposition is filed by the owner of an earlier mark
   • Name and address of the trademark licensee, along with an indication of authorization to file the opposition, if a trademark licensee files an objection
   • Name and address of the successor, along with the date of receipt of the new proprietor's application for registration, if the registered trademark owner's successor files an opposition
   • Name and address of the opposing party from outside India, along with the service address in India, if a party from outside India files an opposition

The Distinction Between Trademark Objection and Opposition

It is important to understand the difference between trademark objection and opposition:

• Trademark objection: Typically filed by the trademark examiner.
• Trademark opposition: Usually filed by an aggrieved third party.

While the individual filing an objection is not required to pay any fees, the person filing a trademark opposition must pay the applicable fees. The objection must be filed within one month of the advertisement date, while trademark opposition must be lodged within four months.

Upon acceptance or decision regarding the trademark application, the result will be communicated to the parties involved, including the trademark applicant and the aggrieved party.

By following these guidelines, individuals can navigate the trademark opposition process effectively and protect their rights and interests.