A ‘Trademark opposition’ means an objection filed by third parties, against registration of a trademark within 4 months of the advertisement of the trademark to be opposed. This includes any mark which may be identified with an already registered trademark or that have become customary in the practice of trade.

Locus Standi to file an opposition suit:

Section 21 of the Trademarks Act, 1999 specifically provides that any person can file for trademark infringement thus denoting that there is no specific bar regarding the filing of trademark opposition, however as a general practical rule, only the trademark owner or the interested party can file an opposition against the advertised trademark.

Rules regarding the filing of Trademark opposition in India:
Trademark Rules, 2017 is the latest amendment in regards to the procedure related to the trademark in India. There is specific procedure mentioned under these rules regarding the filing of opposition in India, the rules being as follows:

Form TM-O:

The Trademark Rules, 2017 provides for specific forms which are required to be filed for the opposition of the trademark. The forms are titled as TM-O.

Any person can within 4 months of publication of the trademark by filling the form TM-O can file for the opposition.

There used to around 74 different forms before the amendment and after the latest amendment, there are 8 exhaustive forms for filing the opposition.

Rule 44:
After the applicant receives TM-O notice, he shall be provided with a time period of 2 months to file a counterstatement justifying his stance and in case the applicant files to file any counter statement within the stipulated time, the application shall be deemed to be abandoned.

Rule 45:
The opposition party can produce evidence within two months of the filing of counterstatement by the applicants, however, this process is not mandatory and the opposers can solely rely on the opposition filed by them.

Rule 46 and Rule 47:

The Applicants are given an opportunity to file evidence in his support as a reply to the evidence adduced by the opposing and the final opportunity to adduce evidence is given to the opposition who can file the same within 1 month after receiving the evidence from the applicant. However, these procedures are not mandatory for either of the parties and are incomplete discretion to them.

After the process of filing the opposition, counterstatement and relevant evidence are over the examiner shall arrange for hearings for both the parties and these hearing notice must be given at least 1 month prior to the date of the hearing and the same can be adjourned by either of the party before 3 days if necessary.

We shall be seeing the Grounds of opposition under the Indian Trademark Act, 1999 along with the famous example of Paypal and Paytm trademark opposition case.

Paytm vs PayPal Opposition case:

This is one of the prominent cases where a US-based mobile wallet company filed an opposition against an Indian based mobile wallet company named Paytm. Paytm became very popular in India due to the event of demonetization in India, shortly after which Paytm filed a trademark application with a device mark which was also significantly similar to that of Paypal.

Pay Pal had registered its trademark in India and after the advertisement of trademark application of Paytm, they filed an opposition against Paytm as they were a well-known trademark and there were potential chances that Paytm shall gain the undue advantage of PayPal’s worldwide reputation. There have been no documents released regarding the opposition or counterstatement filed by both the parties, however, the relevant grounds for filing an opposition in this case is:

1) Grounds Under Section 9 of the Act:
Section 9 of the Act as discussed above are absolute grounds and the same shall be invoked in a situation wherein the trademark is incapable of being registered as it lacks the distinctive character which is the primary requisite for registration of the trademark.

Under Section 9 (1) (a) of the Act, any mark which is incapable of being distinguished from the already existing mark is considered to be devoid of distinctive character and shall not be granted registration. In this case, the logo and the prefix of ‘Pay Pal’ is extremely similar to that of ‘Pay TM’ and this similarity depicts that the latter does not have any distinctive character and merely has copied most of its characteristics from the petitioner’s logo.

As also stated in the case of Laxmikant V. Patel v. Chetanbhat Shah & Anr AIR 2002 SC275 if any trademark is so similar to that of the already existing mark, that it becomes tough to distinguish between both the marks, in such a case the latter trademark is considered to be devoid of any distinctive character and cannot be granted trademark registration.

2) Grounds of Refusal under Section 11 of the Act:
Relative grounds for refusal are invoked when the trademark or device mark is very similar to that of an already existing trademark, the legislative intent behind introducing such grounds is to protect the interest of already registered Trademarks. Even in this case since the petitioner has already registered his trademark, he can object Respondent’s label mark under relative grounds as follows:

Section 11(1)(a) of Trademarks Act it protects all the trademarks which have been registered under the same class of trademark for similar goods and services.

In this case, since both the petitioner and Respondent have registered their label mark under Class 36 of Nice classification and are engaged in the service of E-wallets, there is a high chance that the Respondents may take undue advantage of the petitioner’s goodwill and reap in economical benefits and this may also lead to loss of reputation for petitioner’s company and hence registration of such a close mark shall not be permitted.

Under Section 11(1) (b) a Trademark can be refused if the mark is so similar to an already existing mark that it may cause deception to the public as to the ownership of the Trademark. In the current case, since the name and logo of the Petitioner’s and defendant’s mark are very similar, there is a likelihood that the public is deceived and may lead to the confusion.

In the case of Leather Cloth Company Ltd. v. American Leather Cloth Company Ltd HL 1 Feb 1865., the court stated that if the mark is bound to make any kind of confusion in the eyes of the public, the same shall not be registered under Indian Trademark Act. In the case of Toshiba Appliances Co. v Kabushiki Kaisha Toshiba (2006) 1 CALLT 601 HC the court rejected the defendant’s trademark as it was very similar to that of the petitioner’s hence may cause deception to the public and any such mark which causes such confusion shall not be registered under Trademarks Act.
In the case of Mohd Iqbal vs. Mohd. Wasim AIR 2002 MP 162 the court while discussing the concept of ‘Deceptively similar trademark’ held that the similarity of trademarks must be identified using a ‘Reasonable man’s test’ and if the mark seems similar and likely to cause deception in eyes of the general public, then in such case the marks must be rendered deceptively similar and shall not be granted trademark registration.
The Petitioner’s mark is a ‘Well known Trademark’ as it satisfies the requirement laid under Section 2 of the Act and also the guidelines mentioned in the case of Bloomberg Finance LP v. Prafulla Saklecha & Ors 2013(56) PTC 243 wherein it is stated that a mark shall be deemed to be a well known trademark is a mark which has substantial market presence in a geographical area and the brand is recognized by the people who uses that product/service that people may recognize similar trademark to be attributable to the owner company, though this concept is applicable only when the trademark registration is sought after in different class, however in this case since the petitioner’s mark falls under the definition of ‘Well known Trademark’ due to their market presence and dominance for over 16 years in the market, the respondents are susceptible to exploit such trademark which is build due to petitioner’s reputation and goodwill over years and hence the respondents shall not be permitted to register this label mark which is strikingly similar to their mark.