In process of application of trademarks, any individual has the right to file an opposition against the trademark published in the trademark journal due to various reasons.
Let’s learn briefly about the meaning of trademark opposition, reasons for filing an opposition against a trademark, the process of trademark opposition, brief input trademark objection and differences between trademark opposition and objection.
What is Trademark Opposition
Trademark opposition arises at the time where the proposed trademark is opposed by a third party that can be made by any individual or any company whose trademark is registered, with the intention of protecting the misuse of any brand names
Opposition for a trademark is made when the registrar accepts the trademark application and publishes it in the official trademark journal.
Reasons for Trademark Opposition
The following are some of the reasons raised against the proposed trademark for opposition such as,
- Opposition is raised when the proposed trademark is identical to the existing trademark.
- When the proposed trademark lacks being innovative or unique.
- When the trademark application is done in an improper or dishonest way.
- When proposed trademark causes confusion in identification for the public.
- When the proposed trademark is against law.
- The proposed trademark is against any religious beliefs or any interests of the public.
- When the proposed trademark is descriptive in nature.
- When the proposed trademark is banned under Emblem and Names Act, 1950.
So these are the main reasons for the opposition to trademark.
Process for Trademark Opposition
How to apply for trademark opposition is briefly explained below?
- A trademark opposition is made at the time where the proposed trademark is published or republished in the official gazette of the trademark journal within 4 months from the date of the trademark being published.
- The opposition can be filed by trademark form TM – O which should contain trademark registration application number, class of good or service and name of the applicant of trademark. It should also contain details about the opposing party and grounds of opposition along with prescribed fees.
- After the opposition notice is filed the same should be sent to the trademark applicant. Within the period of 2 months, the applicant must file a counter statement for the same.
- The opponent party should submit evidence in support of his statement within 2 months in the form of an affidavit, he can even submit the same in writing to the registrar. Failing to do this, the opposition is treated as abandoned.
- After the evidence is submitted by the opposite party, the applicant should also submit proof for his statement within 2 months. If he fails to submit, the registrar will treat the application as deemed to be abandoned.
- After both the parties have filed their piece of statements, the registrar will call for a hearing statement of both the parties. After hearing both the parties, the registrar will come with an accurate judgement.
- If the judgement is in the favour of the trademark applicant, the registrar will continue with the further process of issuing the trademark certificate. If the judgement is in the favour of the opposing party then the trademark application will be cancelled.
- If the applicant fails to do so, the trademark application is deemed to be treated as abandoned.
- If the parties want to pause or adjourn the hearing before 3 days from the date of hearing, it can be made by filing form TM – M with the prescribed fees of ?900. It is allowed that maximum of 2 adjourns can be made and it shall not be restricted to not more than 30 days.
- The fees for applying for opposition for a trademark is ?2700 for online filing and ?3000 for filing physically.
- The trademark opposition must be filed with the registry where the application for trademark was made. The registration office for a trademark is located in Delhi, Chennai, Ahmedabad, Mumbai and Kolkata.
Documents to be submitted for the opposition of Trademark
- The opposition of notice.
- Notice of counter-statement made for the opposition.
- Proof in support of opposition by the opponent party.
- Proof in support of the application by the applicant.
- Opposition hearing statement.
- Adjournment of hearing.
- Notice order from the registrar for the opposition.
So this was all about the process of filing an opposition against a trademark
Is there any difference between trademark opposition and objection?
YES! These two terms look similar, but actually, they are different. Trade opposition is made by a third party after the registrar has accepted the application of trademark and submitted the same in its journal, but trademark objection is rejecting the application of trademark during the process of application for violating any rules, or if it is similar to existing trademarks or it is damaging any religious beliefs of the public.
As we saw earlier the difference between the meaning of trademark opposition and objection. Here are a few more differences stated below,
- The trademark should be objected to by the examiner of trademark application whereas the trademark should be opposed by any third party after the trademark is published in the official gazette of the trademark journal.
- In order to file an objection for a trademark, the prescribed fees is nil. But for filing opposition you are required to pay fees stated by the registrar.
- Filing of opposition should be made by sending notice of opposition and the objection for trademark application is to be made by the examiner by filing an examination report.
- The time period given for the applicant for replying to opposition is 3 months and for replying to the objection is 1 month.
- An appeal can be filed by applicant after the application as been rejected in case of opposition, the appeal depends upon judgement of registrar.
- If the judgement is in the favour of the applicant in case of objection, the registrar will continue in the process of publishing the trade mark in trade mark journal. In case of opposition, the applicant will receive his trademark certificate.
So these are the main differences between trade mark opposition and trademark objection.