INDIAN LAW OF TRADE MARKS OPPOSITION(s) & PROCEDURE OF TRADE MARK OPPOSITION IN INDIA UNDER TRADE MARKS RULES, 2017 By *Vijay Pal Dalmia, Advocate & Partner Vaish Associates Email: vpdalmia@vaishlaw.com Mobile: 09810081079 & Rajat Jain, Advocate Email: rajatjain@vaishlaw.com Mobile: 09953887311 Filing and prosecution of trade mark opposition, is one of the most significant remedies available with the brand owner for protecting his or her trade mark. This is one of the earliest opportunity given to the public as a whole, including but not limited to an affected party whose trade mark rights may be hindered/ diluted, by an unscrupulous applicant who has made an attempt for registration of a similar or deceptively similar trade mark and sought statutory protection by hoodwinking the original prior registered/ unregistered trade mark owner as well as the office of the Registrar of Trade Marks. An opposition can be filed by any person (Opponent), who may be from India or outside India, which is a kind of protest by the Opponent, opposing the application for registration of a trade mark. If a trade mark application which is violating the intellectual property rights of any person or entity is not opposed within the stipulated period of limitation, the same proceeds for registration. Once a trade mark is registered, it acquires a statutory recognition, and its subsequent cancellation becomes an onerous and cumbersome exercise in the juxtaposition of trade mark opposition. Once a trade marks gets registered, getting protection from the court of law also becomes complicated, because at times the courts may not be inclined to disturb a trade mark which has been registered by the Registrar of Trade Marks, who is considered to be a specialist authority in trade mark matters. In case, a person feels that the registration is likely to affect his
intellectual property rights associated with his trade mark, it should always be preferred that opposition is properly filed within the period of limitation and prosecuted diligently. If, the opportunity of opposing a trade mark is lost, it is lost forever and the damage caused may be irreparable. The basic intent behind publishing the trade mark in the Trade Marks Journal is to give notice to the public at large about the trade mark which is being proposed to be registered, to enable any interested party to oppose the registration. It is important to note that registration of a trade mark can be opposed, only after the trade mark application is advertised in the Trade Marks Journal, which is a kind of official gazette. The Trade Marks Journal is published from time to time, normally on a weekly basis, and can be viewed by all from the official website of the Registrar of Trade Marks at http://www.ipindia.nic.in/journal-tm.htm. For filing a notice of opposition, the period of limitation of 4 months from the date of the advertisement or re-advertisement of the trade mark in the Trade Marks Journal is extremely important, as this time is non-extendable for any reason, whatsoever. It is also important to adhere to all the strict timelines and limitation prescribed under the law, during the process of the prosecution of the trade mark opposition proceedings, as any lapse can lead to the abandoning of trade mark opposition by the Registrar of Trade Marks. Once the opportunity of opposing a trade mark is missed, the only viable remedy left is to file a petition for cancellation of the trade mark before Intellectual Appellate Property Board (IPAB) or the Registrar of Trade Marks. The grounds and reasons for opposing a trade mark will depend on the facts and circumstances of each and every case. However, some of the basic grounds for opposing a trade mark may be as under: 1. The trade mark is similar or deceptively similar to the trade mark of the Opponent;
2. The trade mark is similar or identical to the registered trade mark or pending trade mark of the Opponent, and is for similar or allied and cognate, goods or services; 3. The trade mark is generic and descriptive in nature; 4. The resemblance of the trade mark to the well-known trade mark of the Opponent. 5. The Applicant has filed the trade mark application malafidely or with bad faith; 6. The Applicant is not the actual owner of the trade mark; and 7. The registration of trade mark is likely to deceive the public or cause confusion. The notice of opposition has to be filed and contested at the appropriate office where the original application for trade mark registration has been filed by the Applicant. Presently, the office of the Registrar of Trade Marks has 5 branches which are located in Ahmedabad, Mumbai, Delhi, Kolkata, and Chennai. FLOWCHART BRIEFLY EXPLAINING THE NORMAL PROCESS OF OPPOSITION OF TRADE MARK Publication of Trade Mark in the Trade Marks Journal Opposition to be filed within 4* months from the date of publication in the trade marks journal *(No Extension possible) Opposition to be filed on Form TM-O COUNTER STATEMENT Counter Statement to be filed within 2* months on Form TM-O from the date of the receipt** of the notice of opposition from the Registrar of Trade Marks *(No Extension possible) **Applicant can also file the counter statement on the basis of the electronic copy of the notice of opposition made available on the website of Trade Marks Registry
EVIDENCE Evidence in support of opposition or the intimation of not filing evidence to be given within 2* months from the date of the service of counter statement *(No extension possible) Evidence in support of application to be given within 2* months from the date of the service of evidence by opponent or the intimation of not filing evidence *(Extension is not permissible) Further evidence in reply, if any, may be given within 1* month by the opponent from the date of the service of evidence in support of application *(no extension possible) No further evidence allowed ADDITIONAL EVIDENCE However, the Registrar can exercise his discretion for further evidence* subject to cost and terms * This can be done by filing an interlocutory application HEARING Upon completion of evidence, the Registrar will give notice to parties of the first date of hearing which shall be at least 1 month after the date of first notice ADJOURNMENT If any party wishes to take an adjournment on the date fixed for hearing, the party has to make a request for adjournment on Form-M, at least 3 days before the date of hearing with reasonable cause *The Registrar may adjourn the hearing and intimate the parties about the next date of hearing. *More than 2 adjournments are not allowed. CONSEQUENCES OF NON-APPEARANCE IN HEARING
If any of the party does not appear on the date of hearing or adjourned date of hearing, the Registrar may dismiss the application if the defaulting party is applicant, or may dismiss the opposition if the defaulting party is opponent. DECISION BY REGISTRAR Opposition Allowed. Application Rejected Opposition Rejected. Application proceeds for registration. *There may be reasonable variations in the said process subject to the orders of the office of the Registrar of Trade Marks and judicial pronouncements. Authors *Vijay Pal Dalmia (Partner Vaish Associates Advocates) And Rajat Jain, Advocate Mobile: +91 9810081079 Email: vpdalmia@vaishlaw.com & rajatjain@vaishlaw.com www.vaishlaw.com * The author is a senior litigator with 30 years of experience in court trials and deals with cases relating to prosecution under the Income Tax Act, 1961, The Black Money (Undisclosed Foreign Income and Assets) and Imposition of Tax Act, 2015, Money Laundering Act, economic offences and white collar crimes. DISCLAIMER: This article is for informational and educational purposes only. While every care has been taken in writing this article to ensure its accuracy at the time of publication, the Author or Vaish Associates Advocates assumes no responsibility for any errors which despite all precautions, may be found therein. This article neither constitutes a contract nor will form the basis of a contract. The material contained in this document does not constitute/substitute professional advice that maybe required before acting on any matter. No claim is made by virtue of the use of any trademark or images used in this article. All trademarks and images belong to their respective owners. *COPYRIGHT NOTICE: 2017, India, Vaish Associates Advocates, 1st & 11th Floors, Mohan Dev Building, 13, Tolstoy Marg, New Delhi-110001, India. Email: vpdalmia@vaishlaw.com