Opposition procedures and timelines for a trademark in India

What is the next step once the trademark has been advertised in the Trademarks Journal?

After the examiner reviews the trademark, if the trade mark application is considered allowable, the application is advertised in the Trademarks Journal. Once advertised, the trademark is open for opposition purposes for a compulsory period of four (4) months. In case no opposition is filed within this stipulated time period, the mark proceeds to registration. The purpose behind publishing a Trademark in the Journal is to enable any third party to view the trademark and file a trademark opposition against it.

Who can oppose a Trademark Application in India?

“Any person” may oppose a trademark. This person does not necessarily have to be a registered proprietor of any mark. He can be a purchaser, customer or a member of the public likely to use the goods. The rationale behind this is that the Opponent is not only representing himself but the public at large because having two similar marks in the market can only result in confusion.

What is the period within which a Notice of Opposition can be filed?

The Notice of Opposition has to be filed within four (4) months from the date of publication of the mark in the Trademark Journal. The period is not extendable under any circumstance.

What are the stages in an Opposition proceeding?

• Stage 1 – Filing a Notice of Opposition/Filing a Counter-Statement : Any person wanting to oppose a mark can do so by filing a Notice of Opposition on the prescribed form along with the prescribed fee within four (4) months of advertisement of the mark. It is first sent to the Registry for review and if all the formalities are met, the Registry will then serve the notice on the other party.A counter-statement or reply to the opposition must be filed within two (2) months. There is no extension to file a counter-statement which means that if the Trademark Applicant fails to file a counter-statement within two (2) months of receiving the Notice, the mark shall be deemed abandoned. The counter- statement is first sent to the Registry for review and if all the formalities are met, the Registry will then serve the counter-statement on the Opponent.

• Stage 2 – Filing of Evidence in support of Opposition : Within two months (extendable by one (1) month of receiving the counter-statement, the Opponent has the choice of providing evidence in support of his opposition in form of an Affidavit to strengthen the case. The Opponent can choose to waive filing an Affidavit if he wants to rely on the facts stated in the notice of opposition. Whatever maybe the choice, the Opponent has to inform the Officials and the other party within the prescribed time otherwise the opposition will be tagged as abandoned.

• Stage 3 – Filing of Evidence in support of Counter- Statement : Within two (2) months of receiving evidence/intimation of waiver by the Opponent, the Applicant has to file evidence in support of his counter-statement /application. The Applicant also has an option to waive his right to submit any evidence.

• Stage 4 – Filing of Evidence in Reply : Within one (1) month of receiving evidence/waiver, the Opponent again has the option to file additional evidence in support of his opposition. This option is given to achieve some sort of finality in the proceedings, to rebut the evidence produced by Applicant.

• Stage 5 – Hearing : Ordinarily with three (3) months of the completion of evidence, a hearing is appointed and the parties are notified. After hearing the parties and considering the evidence, the Registrar shall decide whether the trademark is to be accepted or not.