Filing for a trademark and having it examined by the Trade Marks Office is only the first step in the journey towards obtaining a registered trademark. Under Indian Trademark law, once a trademark applied for has been examined for objections pertaining to distinctiveness or similarity with earlier cited marks, the trademark application is advertised in the Trademarks Journal. The advertisement is to make it known to the public at large that this trademark is sought to be registered, and is open to be opposed by third parties before registration, if they believe there is any similarity or infringement with other marks. The window for filing an opposition against an advertised trademark is open for a compulsory period of four (4) months. If no opposition proceedings are initiated, the advertised trademark proceeds towards registration.
The timeline of four (4) months for opposition is strict and cannot be extended under any circumstances. Previously, the Trade Mark Rules (the “Rules”) empowered the Registrar to grant a discretionary extension of one (1) month at a time, but the amended Trademark Rules, 2017 (the “Rules”), have removed such discretionary powers, and the prescribed period of four months, stipulated under Section 21(1) of the Trade Marks Act, 1999 (the “Act”), is no longer extendable.
Who can oppose a trademark?
Indian trademark law allows “any person” to oppose a trademark (under Section 21 of the Act). Following the principles set in P.N. Mayor v. Registrar of Trademarks (AIR 1969 Cal 80), “any person” need not be only a previous registered trademark owner; even a client, a buyer or a member of the public likely to use the products/services may object to the registration of a trademark based on probable deception or confusion. Therefore, there is no bar as to who can oppose a trademark application, and the Registrar only considers the merits of the opposition, and not the motive of the opponent.
Stages in trademark opposition proceedings
Stage I: Notice of Opposition and Counter Statement
The first step in opposing a trademark is filing a Notice of Opposition within four (4) months of advertisement or re-advertisement of the trademark in the Indian Trade Marks Journal. Any person may file such a notice in the prescribed form, Form TM-O, either online or in physical form, along with the prescribed fee. The notice must contain the grounds on which the trademark is being opposed, and any other relevant information in support of the grounds.
The notice then proceeds for a formality check within the Trade Marks Registry in India, subsequent to which it is served upon the applicant of the opposed trademark, by the Trade Marks Registry in India. Within two (2) months from the date of such service, the applicant must file a reply to the Notice of Opposition via a Counter Statement. The Counter Statement should contain the grounds on which the applicant relies on its application and a rebuttal of the claims made in the Notice of Opposition. No extension is available to file the Counter Statement. Therefore, if an applicant fails to file a Counter Statement in two months from the official receipt of the notice from the Trade Marks Registry in India, the trademark is deemed abandoned. Rule 42 of the Rules allows for speeding up the process by permitting the filing of a Counter Statement even before the service of the Notice of Opposition.
Stage II: Evidence in support of opposition
Within two (2) months (extendable by one (1) month) of receiving the Counter Statement, the opponent may provide evidence to support the claims made in the Notice of Opposition by way of an affidavit to strengthen their case and substantiate their claims. The opponent can also choose to waive this opportunity if they want to rely on the facts stated in the Notice of Opposition. If the opponent decides to waive the opportunity, he/she must inform the Trade Marks Registry in India and the applicant accordingly within the prescribed time, or else the opposition proceedings shall be deemed abandoned.
Stage III: Evidence in support of Counter Statement
Upon receiving the evidence/waiver intimation by the opponent, the applicant must file evidence in support of its application and the claims made in the Counter Statement within two months. The applicant also has the option to waive its right to submit any evidence, by filing a letter relying on the claims made in the Counter Statement.
Stage IV: Evidence in reply
If the opponent so wishes, they may file additional evidence in support of the claims made in the Notice of Opposition and evidence in support of the opposition already filed, and rebut claims made by the applicant in the Counter Statement and their evidence, within one (1) month of receiving the evidence/waiver. This opportunity is provided to achieve a finality in the opposition proceedings and to also allow the opponent to rebut the evidence produced by the applicant, if any. Rule 47 of the Rules provides a maximum time limit of two (2) months, to file the additional evidence with extensions allowed on a case-to-case basis.
Stage V: Hearing
Under Section 21(5) of the Act, the Registrar must provide an opportunity of a hearing to the parties. In the normal course, within three (3) months of the completion of evidence, an opposition hearing is appointed. The parties are notified of the hearing and a date for the same is appointed. After hearing the parties and considering the evidence, the Registrar must decide whether the opposed trademark should proceed to registration and, if so, subject to what conditions or limitations.
The entire opposition proceedings, if filed, can take upwards of a year. Some timelines in the opposition proceedings are strict and failing to adhere to these can lead to either side forfeiting its case. However, there are multiple opportunities for the applicant and opponent to defend their respective positions, and a decision on the final status of the trademark is made based on a careful consideration of all submissions and evidence during the opposition proceedings.