Trade Mark is a type of intellectual property which differentiates your products or services from other competitors in the market. In India, the Trade Mark Act, 1999 permits you to register a Trade Mark. As per SECTION 18 of the Trade Mark Act, 1999 the application for the registration of the mark must be made in the prescribed manner along with the required fees.
As soon as an application is filed for the registration, the examiner (officer assigned by the ministry) prepares an examination report which states whether your application is accepted or denied. If your application is objected/denied by the examiner, then you have to appear for the hearing after sending a relevant reply. But, if your application is accepted by the registrar it published for advertisement in the Trademark Journal. The publication in the Trademark Journal stays for 4 months. During this period any third party can raise an opposition against the published mark which are infringing their trademark.
There are several grounds of opposition to the Trademark registration. They are as:
- SECTION 9 of the Act talks about Absolute grounds for refusal of registration. The section prohibits registration of any mark, which are devoid of any distinctive character. There should be some distinguishing characteristics in the mark. It should not hurt any religious sentiment of any demographic section of Indian citizens.
- SECTION 11 of the Act talks about Relative grounds for refusal of registration. Any Trademark which causes any sort of confusion on behalf of public due to its identical nature of the earlier trademark can be opposed by the existing user of the said Mark.
Some other related provisions are:
- SECTION 12 of the Act talks about registration in the case of honest concurrent use etc. Where two separate entities have co-existed for a long period of time, honestly using the same or closely similar name of a Trademark, there exists a chance of confusion that arises and may have to be tolerated. Under this scenario, an application for opposition can be filed.
- SECTION 28 of the act provides Rights conferred by registration. Any registered proprietor of a Trademark can raise an opposition and can seek legal remedy in case of an infringement of his Trademark in any manner provided in the act.
- SECTION 29 of the Act says talks about infringement of registered trademarks. The sections says that any unregistered user using a registered Trademark which is identical or deceptively similar without any permission for use. There exists similarity of goods or services covered by such registered Trademark and is likely to cause confusion on behalf of public and have an association with the registered Trademark. The registered Trademark has a reputation and use of mark without due cause takes unfair advantage which effects the reputation of registered mark. Opposition can be filed in such a case.
- SECTION 102 of the Act states Falsifying and falsely applying Trademark. A person is said to be falsifying a Trademark when he/she makes a similar Trademark or makes deceptively similar Trademark without any consent of the original/real owner of the same existing Trademark. When an individual makes any alteration, additions or do any kind of changes to genuine (real) Trademark is also considered as falsifying trademark. Such kind of activity can also be opposed by the original registered Trademark owner. Any identity applying for a Trademark by filing a false goods or services description is also a matter of falsifying.
- SECTION 103 talks about Penalty for applying false Trademarks, Trade descriptions etc. – the person shall be punishable with imprisonment of not less than 6 months but may extend up to 3 years and with fine which shall not be less than Rs.50,000 but may extend till Rs.2,00,000.
SECTION 21 of the Act talks about OPPOSITION TO REGISTRATION AND COUNTER STATEMENT. Any person, from the date of advertisement till next four months may file an application of opposition. The application must be filed on Trademark Form 5 in the prescribed manner along with the prescribed fees to the registrar. This is known as TM-O (Trade Mark Opposition). The status of the application will be shown as OPPOSED in the Trademark Portal.
A Trademark opposition can be filed by a customer, member of the public or competitor, or any other person. The person filing for opposition should keep in mind that he needs to be a prior registered Trademark owner. Trademark opposition can only be done at the Trademark Registrar’s office and cannot be taken to a court or the Appellate Board Directly (IPAB).
There are several important points to keep in mind while filing the opposition. They are:
- The opponent must mention the details of the trademark application against which he is entering into the opposition. The details must contains the name of the applicant, the application number along with the name of the requested Trademark and the class of goods or services listed in the Trademark application.
- If the opponent is an account of an existing Trademark application or registered Trademark, then the application/registration number of that mark. If the opponent is a well-known existing user, then there should be an indication of the effect it will cause to the existing mark.
- The opponent must not forget to mention his details such as his name, his mark name, application number of the said respective mark and the address of the business place of the opponent. If the opponent has no place of business in India, then the name of the opponents and his address for service in India must be mentioned.
- Grounds on which the opposition is based must be clearly written.
A copy of that opposition notice shall be served to the applicant by the registrar. Within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant have to file a COUNTER STATEMENT to the registrar in the prescribed manner. The Counter Statement must contains all the necessary points on which the applicant relies for his application along with the facts alleged by the opponent in the notice of opposition that are admitted by the applicant. By any chance, if the applicant fails to file the counter statement within the specified time frame, then the application for the registration shall deemed to be abandoned for non-prosecution under section 21(2) by the registrar. Under the Trademark Portal, the application status will be shown as ABANDONED.
If the applicant sends such counter statement, the registrar shall serve a copy thereof to the person giving notice of opposition and the opposition will proceeds to the evidence stage. Both, the applicant and the opponent will be given fair chance to provide the evidence/evidences on which they rely upon.
The evidence shall be submitted to the registrar in the prescribed time and prescribed manner. Within two months of receiving the copy of counter statement, the opponent shall file its affidavit by way of evidence in support of his raised opposition. The registrar shall ordinarily serve a copy of the affidavit by way of evidence in support of his raised opposition to the applicant.
Within 2 months of receiving the affidavit by the way of evidence from the opponent, the applicant shall file its affidavit by way of evidence in support of his application. The registrar shall serve with the copy within 2 months from the date of receipt for the same to the opponent.
After the evidence filing stage, the registrar shall provide an opportunity to be heard to both the parties. The registrar shall send notices to both the parties stating the dates of hearing. The first date of hearing shall be at least one month after the date of first notice. After the hearing process and examining the evidences, the registrar may decide whether the opposition filed was appropriate or not and may take a note for the grounds of rejecting the applicant’s mark for registration. The status of the application will be marked as REJECTED. If the registrar finds that the opposition does not hold much weightage then he can continue the registration process for the applicant’s mark. He may also impose any condition or restriction before granting the permission for the registration. The status of the application will turns to REGISTERED.
The decision of the registrar made in the proceedings can be challenged later by an aggrieved person by filing an appeal before the Intellectual Property Appellate Board (IPAB).
The registration of Trademark shall be valid for a period of 10 years, but may be renewed from time to time in accordance with the provisions of the Trademark Act, 1999.
On summarizing this, we understand that:
A Trademark gets published in the official journal of Trademark after getting approved from the registry. From the date of publication till next 4 months, any third party can raise an opposition by filing an application on the grounds mentioned in the act. The application for opposition should be filed in the prescribed manner with all essential details along with the prescribed fees. The applicant, from the day of receipt of the notice of opposition, will get a period of 2 months to submit his reply against opposition notice. That reply is called as Counter Statement. Fees is required to be submitted along with the reply to the opposition. Both the parties will get chance to provide those evidences on which they rely. The registrar will examine both the parties and will pass a hearing order. If the registrar will find the grounds of opposition to be sufficient enough, then he may reject the application for trademark registration but if the applicant holds more weightage than the opponent then the application for registration of Trademark will be accepted. Later, the decision made by registrar during the opposition procedure can be challenged by the aggrieved party by filing an appeal before IPAB.
REFERENCES:
https://ipindia.gov.in/writereaddata/Portal/ev/TM-ACT-1999.html#s11
By Yashvi Kushwah, Intern at Excelon IP