OPPOSITION: AN OPPORTUNITY TO DEFEND YOUR TRADE IDENTITY

Introduction

A Trademark Opposition is a tool for the public at large to exercise their owners for their own benefit before the Registrar of the trademark. Wherein one party can object another from enlisting a trademark. India has a trademark law evolved on precedent-based law standards besides having a governing statute. Indian trademark law is created and furnished with enough checks and protections to keep up the uniqueness of the imprints enrolled in the vault and to shield the maker’s privileges from getting infringed. The Trademark Act of 1999 accommodates three-level security for the trademark enlistment. First and foremost, in the registration office itself where the authority checks the imprint and asses its uniqueness and possibly endorse, in case the authority doesn’t track down a comparative one previously enrolled in the current information base of the registry, it is then upon the public at large to bring such marks to the notice of the Registrar.Thereby, it is on the Registrar to decide either upon the rejection/registration of a mark.

Opposition of a Trademark

Section 21 of the Trademarks Act, 1999 lays down the provision for Opposition of a Trademark. It states that “any person” can file the notice of Opposition. This law includes people, companies, trusts, partnership firms. In an instance, where there are two or more persons have vested interests in a Trademark, their Notice of Oppositions can be joined together as opponents with reagrd to that Trademark.

Ordinarily though, it is observed that an onwer of the existing or pending Trademark or a prior user of a Trademark or of a similar mark files a trademark opposition.

The grounds for filing a Trademark Opposition in India are as follows:

• The trademark is similar or identical to an earlier or existing registered trademark.
• The mark is devoid of distinctive character.
• The mark is descriptive in nature.
• Application for the trademark is made with bad faith.
• The mark is customary in the current language or in the established practices of business.
• The trademark is likely to deceive the public or cause confusion.
• The mark is contrary to the law or is prevented by law.
• The trademark is prohibited under the Emblem and Names Act, 1950
• The mark contains matters that are likely to hurt religious feelings of any class or section of people.

Where to file a Notice for Trademark Opposition in India?

According to the law, a Notice of Opposition should be filed within the territory of the application for the conflicting mark has been filed.

What is the procedure involved in Trademark Opposition in India?

Section 21 of the Trademark Act, 1999 lays down a step by step procedure for the Opposition of a Trademark.

Notice of Opposition- Within 3 months from the date of advertisement or re-advertisement of an application for invitation of opposition in journal as published by the department  or within an extended 1 month period, as the Registrar may allow on payment of prescribed fee, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration of a Trademark.

Counter Statement- On receiving the Notice of Opposition, the applicant may file a counter statement stating his grounds for registration within two months from the date of receiving of the Notice of Opposition. In case, he fails to do so, it will be presumed that the Applicant has abandoned the application.

Serving a copy of Notice of Opposition- As and if the Registrar receives such copy of Counter statement then it is on him to serve such copy of Counter Statement to the Opponent.

Evidence in Support of Opposition- If the Applicant files the Counter-Statement, within 2 months (extendable by one month) of the receipt of the counter-statement the Opponent must file evidence, by way of an Affidavit. The Opponent also has an option to write to the Registrar stating that he does not desire to file evidence but instead intends to rely on the facts stated in the Notice of Opposition.

Evidence in Support of Application- Upon receipt of the evidence of the Opponent, even the Applicant is provided with 2 months (extendable by 1 month) for filing Evidence in Support of Application, if any.

Evidence in reply- Additionally the Opponent is given 1 month (extendable by 1 month) to file Evidence in response to the Applicant’s evidence.

Hearing- Based on the notice of opposition, counter statement, and evidences filed, the Registrar shall call for a hearing. Within fourteen days of receipt of the notice of hearing, the parties are required to notify the Registrar of their intention to appear in the matter. Finally, the matter is heard by the Registrar and decided upon merits.

Registration or rejection- If the registrar decides in favour of the applicant, the trademark will be registered and registration certificate will be issued. If the registrar decides in favour of the opponent, then the trademark application shall be rejected.

CONCLUSION

The main aim behind the principle of Opposition is to give the public at large a chance to protect their rights. It is evident from the above discussion that this law additionally aids to the people who might not be proprietors of registered trademark but have used a trademark for a considerable amount of time. The provision for Opposition thereby ensures that the goodwill and reputation of such prior trademark users is not misused.

SUBMISSION: SOHINI GOSWAMI, AMITY UNIVERTIY, KOLKATA