Can a Trade Mark be opposed in India before it is Advertised for Opposition?

Summary: In India, the law provides for formal opposition to a trademark application only after it is advertised, but can a third party intervene even during the pre-advertisement stage?

Introduction

A trademark is registered after undergoing several levels of scrutiny. After a trademark application is examined by the Registrar, a fixed time period is allowed for third persons to oppose it. Particularly, Section 21 of the Trade Marks Act, 1999 (“Act”), says that any person may, within four months from the advertisement or re-advertisement of the application, initiate opposition proceedings. Given this, the question arises as to whether a request to refuse a trademark application can be entertained before the advertisement of that application itself.

A similar situation came up in Rajkumar Sabu v. Sabu Trade Private Ltd. and Anr. (W.P. (IPD) No. 34 of 2025 and W.M.P (IPD) No. 23 of 2025) before the Madras High Court. Here, the Petitioner had sought a direction to call for the Registrar’s records, and to quash an acceptance order it had granted for a trademark.

Background

Respondent No. 1, Sabu Trade Private Limited, had filed an application for the word mark “SACHAMOTI” on January 22, 2020, with a user claim of April 01, 1984, primarily for products related to Sabudana (Sago) and its trading services. At this point, it is useful to note that the mark in question has been a bone of contention between the parties for years, and across multiple legal proceedings.

In July 2021, the Petitioner filed an Interlocutory Petition, requesting that the application not be processed further. A key ground was that the application had relied on fabricated documents showing inconsistent user dates and assignment deed. The Petitioner also claimed to be the rightful owner and registered proprietor of the trademark “SACHAMOTI,” and filed a request to be heard.

However, the Petitioner did not receive a response to its petition. Meanwhile, the trademark application was advertised in the Trade Marks Journal No. 2199 in March 2025. In response to a later request under the Right to Information Act, 2005, the Petitioner was informed that all available documents had been uploaded on the Registry Portal.

The case

The present writ was filed thereafter, with the Petitioner contending that, under Section 19 of the Act, the Registrar has the power to withdraw an application after acceptance but before registration. Per the Petitioner, the Registrar should have considered the information provided by the Petitioner and taken a decision under Section 19.

The Petitioner also stated that nothing in the Act prohibits the Registrar from hearing the Petitioner at the pre-advertisement stage. The Petitioner claimed it had filed its Interlocutory Petition under the prescribed provisions, which pertained to applications “in respect of any matter not covered” under existing the Trade Marks Forms.

Respondent No. 1 argued that no opposition could be filed at the pre-advertisement stage. It added that the Petition did not refer to any specific statutory provision, and the Registrar was right in disregarding the Petition, and proceeding to accept and advertise the trademark application. It also contended that, although Section 19 confers certain powers on the Registrar, they do not apply to the pre-advertisement stage.

The decision

The Madras High Court held that an application would not be maintainable if the right to make such an application did not have a place in a Statute or Rules. As such, the entry invoked by the Petitioner while filing the Petition (i.e., Entry 15, Schedule I, Trade Mark Rules) provides payment for three purposes: (i) review of the Registrar’s decision; (ii) petition for obtaining the Registrar’s order for any interlocutory matter; or (iii) any other matter not covered in other Trade Marks Forms.

The Court observed that, typically, an application must pertain to a substantive right traceable in the Act and associated procedure in the Rules. Without invoking a particular provision, the petition would not be maintainable, as was the case here.

The Court also noted that an opposition is clearly provided for only at the post advertisement stage. This is supported by the rules for examination of trademark applications (Rule 33(1)), which enables the Registrar to examine, and even re-examine, an application, but does not provide for an opposition at that stage. Oppositions fall under Section 21 (to be entertained within four months of advertisement/ re-advertisement) and Rules 42 to 51.

The Court said that Section 19 empowers the Registrar to withdraw the acceptance of an application any time before registration, and may be exercised even before the mark is advertised. But Section 19 does not grant someone other than the applicant the right to be heard on ‘withdrawal of acceptance’.

The Court, nevertheless, addressed the Petitioner’s grievance that it ought to have been, at the least, provided a response, for it had paid the requisite fees for its Petition. In future scenarios, the Court proposed a practical solution that the Registry could mandatorily require that Petitions mention their statutory basis, failing which they may be rejected.

The Court additionally noted that since the Petitioner had an opportunity to oppose the trademark application after it was accepted, which it had duly exercised, the Petitioner was not left without any remedy, and no prejudice was caused.

Conclusion

This case reaffirms that India’s Trade Mark law is a complete code, and if the statute clearly provides for a specific remedy or right at a certain stage, it cannot be presumed that the remedy or right subsists at every other stage as well. Additionally, petitions to the Registrar must have a substantive basis, backed by a statutory provision or rule. Failing to demonstrate such basis risks the petition being rejected altogether. In this context, the Madras High Court also addresses an important gap, which is that the Registrar must properly respond to applications or petitions that have been filed and duly paid for, even if it means rejecting them for having no statutory basis.