The very first step to getting a trademark registered is to application for it. However, the trademark application has to go through stages of opposition in order to receive approval from the Registrar. It is important to clear and counter all the claims of the opposition (notice).

The Trade Marks Rules, 2017 provides for the procedure as an extension to Sections 20 to 23 of Trade Marks Act, 1999. Section 20- provides for the “Advertisement of Application”. The Registrar has to advertise the application in the Journal, once accepted or after an error in the application has been corrected or amended.

Once the examiner has reviewed the application, and has allowed its advertisement, it is advertised in the Trademarks Journal. This advertisement can be seen as an invitation to opposition (if any).

TIMELINE FOR TRADEMARK OPPOSITION

WHO CAN OPPOSE A TRADEMARK APPLICATION?

Any person can oppose a trademark application once it has been advertised”. It is not necessary for such a person to be a registered proprietor of any mark. He/she can be a purchaser, member of general public likely to use the mark or even a customer.

The only point for having such a light eligibility criteria or no eligibility criteria for that matter, is that the Opponent is responsible for representing not only himself/herself but the public at large and when there are “deceptively similar” in the market, it causes confusion to public, thus affecting the reputation of the existing trademark.

RULES INVOLVED

• Rule 9- deals with “Issue of notices”. It states that any notice related to application or proceeding must be issued by the Head of office or any person authorised by the Registrar.
• Rule 39- deals with Manner in which the application must be advertised i.e. in the journal.
• Rule 42- deals with Notice of Opposition which shall be filed through FORM TM-O. [As per Sub-rule 1]. This rule further states that a fee payment has to be made for each registration under each class of good (of the trademark). A copy of the Notice of Opposition must be served to the concerned applicants within 3 months by the Registrar.
• Rule 43- this is an important Rule as it deals with the essential requirements of an opposition Notice.
• Rule 44- this is the next important step. This rule prescribes that a counterstatement must be filed through FORM TM-O within 2 months from the receipt by the applicant of the copy of the notice of opposition from the Registrar.
• Rule 45- Within two months from service of the counterstatement, the opponent can leave evidence by way of affidavit as he may desire to adduce in support of his opposition, with the Registrar. He also has the right to waive this provision and not adduce any evidence.
• Rule 46- the applicant can also adduce evidence to support his counterstatement within 2 months.
• Rule 47- In case the applicant shows up with evidence then the Opponent must send a reply to the evidence within 1 month.
• Rule 48- no further evidence can be submitted unless the Registrar deems fit.
• Rule 50- once opportunity to place evidence is closed the Registrar can give notice of first hearing to the involved parties. Ana adjournment is also allowed if a party presents reasonable cause through FORM TM-M. (At least 3 days before hearing).
• If applicant doesn’t show up at the hearing, the application is treated as abandoned and if the opponent doesn’t then application proceeds to registration subject to Section 19 of the Act.