A trademark application filed by an applicant can be opposed by any person for various reasons during the trademark application stage . The person filing the opposition need not have any commercial or personal interest in the matter or be a prior registered trademark owner.
According to Section 21 of the Trademark Act, "any person" can file a trademark notice, irrespective of commercial or personal interest in the matter. The question of bona fides of the opponent does not arise. Hence, trademark opposition filing can be filed by a customer, member of the public or competitor or any other person. Also, the person filing the trademark opposition need not be a prior registered trade mark owner.
A trademark opposition can be filed under different sections like absolute grounds, relative grounds, prohibited mark or the opponent may also raise their own objection with regard to the proprietorship of the trademark opposed. The Indian Trademark Law does not provide any specific grounds of opposition. Hence, the reason for trademark opposition could be varied.
The following are some of the grounds for trademark opposition in India:
1. The trademark is similar or identical to an earlier or existing registered trademark.
2. The trademark is devoid of distinctive character.
3. The trademark is descriptive in nature.
4. The trademark registration application is made with bad faith.
5. The trademark is customary in the currently language and or in the established practices of a business.
6. The trademark is likely to deceive the public or cause confusion.
7. The trademark is contrary to the law or prevented by law.
8. The trademark is prohibited under the Emblem and Names Act, 1950.
9. The trademark contains matters that are likely to hurt religious feelings of any class or section of people.
After advertisement of a trademark in the Trade Marks Journal, any person can oppose registration of the trademark for a period of 3 months (which may be extended by a period not exceeding 1 month). Trademark opposition filings can be done only at the Trademark Registrars office and cannot be taken directly to a Court or the Appellate Board (IPAB). If a trademark opposition is successful, the registration of the trademark will be refused. If the trademark opposition application is rejected, the trademark will be registered.
To initiate trademark opposition proceedings a notice of trademark opposition can be filed by any person within four months of date of advertisement or re-advertisement of the application in the Trademark Journal. The trademark opposition must be on Trademark Form 5 in the prescribed manner and filed with applicable fees. The trademark opposition notice should contain the following information:
1. Application against which trademark opposition is entered including trademark registration application number, class of good or services for which trademark registration application was made and the name of applicant of the trademark application.
2. Details of the trademark opposition party including name and address.
3. The grounds for trademark opposition.
Once the trademark opposition notice is filed with the Trademark Registrar, the Registrar would serve a copy of the trademark opposition notice to the trademark applicant. Within two months of receipt of the trademark opposition notice, the trademark applicant must file a counter statement. If the trademark applicant fails to file the counter statement within the prescribed period, the trademark application shall be deemed to have been "abandoned". To know more about trademark application status, refer to "Understanding Trademark Registration Status".
Based on the trademark opposition filed and the counter-statement filed, the Registrar may call for the hearing of the parties. The Registrar then has the option to rule on the trademark registration application and trademark opposition filing based on the evidence presented.
Form TM-5 must be filed by the opponent for opposing a trademark. The opposition must be filed in the appropriate trademark office, as per the application. The trademark opposition or TM-5 must contain the following details:
Details about the trademark application
1. Impugned application number;
2. Indication of the goods or services from the trade mark application;
3. Name of the applicant for the trade mark sought to be opposed;
Details about the opposing party 1. If the opposition is filed by trademark owner of an earlier mark: Name and address of the trademark owner and an indication that he/she is the trademark owner of such trademark or right;
2. If the opposition is filed by a trademark licensee: Name and address of the trademark licensee along with an indication that he/she has been authorized to enter the opposition;
3. If the opposition is filed by a successor to the registered trademark owner: Name and address of the successor and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office or, where this information is not available, was sent to the appropriate office;
4. If the oppostion is filed by a party outside India: Name and address of the opposing party and address for service in India.
The notice of opposition should be signed by the trademark opponent or by an authorized person who is acquainted with the facts of the case. The person signing should reference to the numbered paragraphs of the notice of opposition, along with date and the place at which it was signed.