How to Oppose a Registered Trademark?

Posted on: 2018-08-27 23:35:37

A Trademark is usually symbols, logos, words and phrases that are used by a service provider or a product developer for identify their services or goods. Trademark registration is a lengthy process and it also includes an advertisement of mark used in a Trademark Journal. Under Trademark Act of India, during a trademark advertisement proceeding or during the re-advertisement of application for registration, a person can initiate a trademark opposition. In case a person raises a trademark opposition, the opposing party is going to have the legal option to be heard. The trademark application is also going to have the option for being heard and accordingly respond to opposition.

There are a number of reasons as to why a person may want to raise a trademark opposition. Here are some of the key grounds associated with trademark opposition.

  • The trademark is identical or similar to an already existing registered trademark.
  • The trademark is rather descriptive in nature.
  • The trademark registration application was made in bad faith.
  • The trademark lacks or is devoid of any distinctive character.
  • The trademark is prevented by law or contrary to law.
  • The trademark might deceive the public and/or lead to confusion.
  • The trademark is strictly prohibited under Emblem and Names Act, 1950.
  • The trademark is considered customary in current language or according to established practices of the business.
  • The trademark includes matters or aspects that might hurt the religious feelings and sentiments of any section or class.

Procedure for Initiating the Trademark Opposition

In order to initiate the trademark opposition proceedings, a person needs to file a trademark opposition notice within 4 months of the date of advertisement or the re-advertisement of application as it appears in Trademark Journal. Trademark opposition needs to be on the Trademark Form 5 according to the prescribed manner. It should be filed along with the applicable fees. The notice for trademark opposition should also contain the information listed below:

  • Application against which the trademark opposition is issued including the application number for trademark registration; the class of services or goods for which the trademark registration application has been made and name of the applicant of trademark application.
  • The details of trademark opposition party such as name and address.
  • The grounds for which the trademark opposition was issued

Trademark Opposition Procedure

Once trademark opposition notice has been filed with Registrar, the Registrar is going to give a copy of trademark opposition notice to trademark applicant. The trademark applicant needs to file counter statement within 2 months from receiving the notice for trademark opposition. If in case the trademark applicant is unable to file counter statement within prescribed period, the authorities will declare the trademark application as one that has been “abandoned”.

The Registrar may choose to call a hearing of the both parties based on trademark opposition and the counter statement that have been filed. The Registrar can then choose to rule on trademark registration application as well as the trademark opposition filing according to the evidences that have been presented.

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