TRADE MARK OPPOSITION PROCEDURE

FILMA JOHNTRADE MARK DEPARTMENT

WHAT IS A TRADE MARK?

A Trade mark is a visual representation attached to

the goods for the purpose of indicating their trade origin

STEPS INVOLVED IN REGISTRATION OF TRADE MARK

• Application for registration • Examination by Registry• Hearing the Applicant• Publication of the Mark in the

Journal• Opposition (if any)• Registration

TRADE MARK OPPOSITION IN INDIA

One step in the process in registering a trademark on

the Principal Trade Mark Register of the Trade Mark

Office, India is passing through the phase termed

PUBLICATION FOR OPPOSITION

STATUTORY PROVISIONS

Section 21 of the Trade Marks Act, 1999 and rules 47-57 of the Trade Marks Rules, 2002 contain the provisions relating to opposition proceedings.

WHO MAY OPPOSEWhen a Trade mark is advertised in the Trade mark Journal, any person can oppose the registration of the Trade mark within 3 months from the date of the Trade mark journal made available to the public.

Normally the following persons can oppose the registration of Trademark:

1. The owner of an earlier Trade mark application or registration having a similar Trade mark for similar goods.

2. A person who has used the same or a similar Trade mark prior to the client, but who has not sought registration of the Trade mark

WHO CANNOT OPPOSE • Where an opposition is filed out of business rivalry, personal vendetta or for the purpose of blackmailing or extortion of money• A “trust” per se not represented by any of its trustees cannot file opposition Emjas Trust V. Windsor Food Co. (1991) PTC 10 (TMR)• A person who launches an opposition on behalf of a company without being authorized by that company to do so Bystander Tm. (1991) RPC (TMR)

GROUNDS OF OPPOSITIONThe various grounds on which any person may initiate Opposition Proceedings are as follows:The trade mark applied for is: Devoid of distinctive character Descriptive in nature Customary in the current language and or in the established practices of trade Likely to deceive public or cause confusion Contains matters that are likely to hurt religious feelings of any class or section of the citizens of India Prohibited under the Emblem and Names (Prevention of Improper Use) Act, 1950 Exclusively of the shape of the goods Identical with/similar to an earlier trademark Malafide/bad faith Prevented by virtue of the law of passing off Contrary to any law for the time being in force Prevented by way of Copyright Act, 1957 

OPPOSITION PROCEDURE

1. The Opposition Notice in triplicate is filed on Form No. TM-5 within three months from the date of publication of the Trade mark with fee of Rs. 2500/- at the Trade mark Registry office by the Opponent.

2. The Trade mark Registry office sends one copy of the Notice of Opposition Notice on TM – 5 to the Applicants.

3. The Applicant sends his Counter- Statement in triplicate on Form No. TM- 6 to the Trade mark Registry with fee of Rs. 1000/-.

4. The Trade mark Registry then sends one copy of the Counter Statements to the Opponents (who has filed TM –5).

5. On receipt of the Counter Statement, the opponent files their evidence by way of an Affidavit supported by documentary evidence of the use to the Trade mark Registry and also sends one set of his evidence to the Applicants simultaneously.

6. On receipt of the documents from the opponents, the Applicants file their evidence by way of an Affidavit and documentary evidence of the use to the Trade mark Registry and sends one complete set to the opponents.

7. On receipt of the documents from the Applicants, the opponents file their rebuttal evidence within one month.

8. After completion of these formalities, the Trade mark Registry fixes a date and time for addressing arguments by both the parties through their attorneys

PROCESS FLOW

1 + 1 month

2 + 1 month

2 + 1 month

2 + 1 month

3 + 1 month

ADVERTISEMENT OF THE TRADE MARK IN THE TRADE MARK JOURNAL

NOTICE OF OPPOSITION

COUNTER-STATEMENT

EVIDENCE IN SUPPORT OF OPPOSITION

EVIDENCE IN SUPPORT OF APPLICATION

REPLY EVIDENCE

FURTHER EVIDENCE

HEARING

NOTICE OF OPPOSITION (Sec 21(1) of the Trade Marks Act, 1999 and rules 47 & 48 of the Trade

Marks Rules, 2002)• Should be filed within 3 months from the date of advertisement or re- advertisement of the trade mark. This period may be extended for a further period of maximum one month• Should be filed in Form TM-5 in triplicate• The notice should include the following:

1. The particulars listed in rule 482. The grounds on which the opposition is based3. Registration numbers and particulars of the

dates of the journals in which they are advertised if the opponent relies on any registered trade mark

• The prescribed fee should be paid• The application for extension of time for filing the notice of opposition should be filed in Form TM-44 along with the prescribed fee

COUNTER-STATEMENT (Sec 21(2) & (3) of the Trade Marks Act, 1999 and rule 49 of the Trade Marks Rules, 2002)

• A copy of the notice of opposition will be forwarded to the applicant by the Registrar within 3 months of the receipt of the same• Should be filed by the applicant in Form TM-6 in triplicate• Should be filed with prescribed fee within 2 months from the receipt of the copy of the notice of opposition • The counter-statement should set out what facts, if any, alleged in the notice of opposition are admitted by the applicant• It should be verified in the same manner as the notice of opposition• If not filed within the prescribed time the application will be deemed to be abandoned • The registrar shall serve a copy thereof on the person giving notice of opposition

EVIDENCE IN SUPPORT OF OPPOSITION (Sec 21(4) of the Trade Marks Act, 1999 and rule 50 of the Trade Marks Rules,

2002)• Should be filed within 2 months from the date of receipt of the counter- statement. This period may be extended by a maximum period of one month which the registrar may allow on request• The opponent may file evidence in support of opposition by way of an affidavit or may rely on the facts stated in the notice of opposition• The opponent should intimate the registrar and the applicant in writing that he does not desire to adduce evidence in support of opposition but intends to rely on the facts stated in the notice of opposition• The opponent should deliver to the applicant copies of any evidence that he leaves with the Registrar and intimate to the registrar in writing of such delivery• If not filed within the prescribed time the opposition will be dismissed

EVIDENCE IN SUPPORT OF APPLICATION (Sec 21(4) of the Trade Marks Act ,1999 and rule 51 of the Trade Marks Rules,

2002)• Should be filed within 2 months from the date of receipt of the evidence in support of opposition or of the intimation that the opponent does not desire to adduce any evidence. This period may be extended by a maximum period of one month which the registrar may grant on request• The applicant may file evidence in support of application by way of an affidavit or may rely on the facts stated in the counter-statement• The applicant should intimate to the registrar and the opponent in writing that he does not desire to adduce evidence in support of application but intends to rely on the facts stated in the counter- statement• The applicant should deliver to the opponent copies of any evidence that he leaves with the registrar and intimate to the registrar in writing of such delivery• If not filed within the prescribed time the application will be deemed to be abandoned

REPLY EVIDENCE (Sec 21(4) of the Trade Marks Act, 1999 and

rule 52 of the Trade Marks Rules, 2002)

• Should be filed within one month from the date of receipt of the evidence in support of application. This period may be extended by a maximum period of one month which the registrar may grant on request on Form TM-56

• The opponent should leave with the registrar evidence by affidavit in reply and should deliver copies thereof to the applicant

FURTHER EVIDENCE (Sec 21(4) of the Trade Marks Act, 1999 and rule 53 of

the Trade Marks Rules, 2002)• The rules enable the Registrar to give leave to either the opponent or applicant to leave further evidence upon such terms as to cost or otherwise, as he may think fitORAL EVIDENCE• Though Section 129 gives power to the Registrar to take oral evidence in lieu of, or in addition to, evidence by affidavit, this power is seldom used in view of the mandatory provisions requiring evidence by way of affidavits

EXHIBITS (rule 54 of the Trade Marks Rules, 2002)

• Exhibits to affidavits filed in an opposition, copy or impression of each exhibit should be

sent to the other party if requested by him and at his cost

• The original exhibits should be produced at the time of hearing

TRANSLATION OF DOCUMENTS (rule 55 of the Trade Mark Rules, 2002)

• Document is in a language other than Hindi or English, an attested translation thereof in Hindi or English should be furnished in duplicate

HEARING AND DECISION (Sec 21(4) of the Trade Marks Act ,1999 and rule 56 of the

Trade Marks Rules, 2002)• The Registrar will appoint a date of hearing and issue notices to the parties• Parties should file Form TM-7 intimating their intention to attend the hearing within 14 days from the receipt of the first notice• If any party who does not so notify the Registrar will be treated as not desiring to be heard and the Registrar may act accordingly in the matter• If sufficient cause for the adjournment for the hearing is not shown the Registrar may proceed with the matter forth with• If applicant is not present at the adjourned date of hearing and has not filed Form TM-7 the application may be treated as abandoned

• If opponent is not present at the adjourned date of hearing and has not filed Form TM-7 the opposition may be dismissed for want of prosecution and the application may be proceed to registration subject to Section 19• In every case of adjournment the Registrar shall fix a date for further hearing of the case and shall make such order as to cost occasioned by the adjournment or such higher cost as the Registrar deems fit• If illness or inability to conduct the case is put forward as a ground for adjournment the Registrar may refuse to grant adjournment unless he is satisfied that the party could not have engaged another agent or legal practitioner in time• A party may submit written arguments• The decision of the Registrar will be notified to the parties in writing

REGISTRAR’S POWER TO TAKE NEW GROUNDS OF OBJECTION (Sec 21(5)

of the Trade Marks Act ,1999)

• The Registrar has power to take into account a new ground of objection not relied upon by the opponentMyrurgia V. Subramanyam AIR 1959 Cal 116

SECURITY FOR COST (Sec 21(6) of the Trade Marks Act, 1999 and rule 57 of the Trade Marks Rules, 2002)

• The registrar may require security for the cost of proceedings if a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice neither resides nor carries on business in India

• The security for cost may be fixed at any amount which registrar may consider to be proper and may be enhanced subsequently

AMENDMENT OF THE NOTICE OF OPPOSITION AND COUNTER-

STATEMENT (Sec 21(7) & 22 of the Trade Marks Act, 1999)• Section 22 empowers the registrar to

permit the correction of any error or amendment of the application for registration, the notice of opposition or the counter-statement

• The Registrar has ample power to allow amendment of the notice of opposition including introduction of a new ground Amin Chand V. Sohan Lal (1977) 2 IPLR 160

ONUS IN OPPOSITION PROCEEDINGS

Onus is ultimately upon the applicant to establish that he is

entitled to registration of the Trade Mark applied for.

National Sewing Thread V. James Chadwick AIR 1953 SC 357 at

363

APPEAL (Sec 91of the Trade Marks Act, 1999)

• Every order or decision of the Registrar under Section 21 of the Act is appealable to the Appellate Board

• Exception – Interlocutory orders involving procedural mattersRatan V. Asst. Registrar AIR 1997 Del 93 at 95

Thank You