Trademark Opposition: Complete Process and Purpose

Updated on December 18, 2023 07:40:45 AM

A Trademark is basically a mark or symbol that represents graphically. It can be a word, a design, a combination of words and colours or a logo. A trademark aids to distinguish a particular brand and build a distinct image in the marketplace. A Registered Trademarkcreates a unique impact in consumers’ minds regarding the goods and services that they serve.

The Trademark Registration is a long and complex procedure. The trademark opposition Process is one of the stages in the TM Registration. Trademark Opposition can be raised by anyone who feels infringement regarding their trademark. In this article, we will explore the complete stages of the process, the ground of opposition, the purpose, and the duration of the TM opposition process.

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Understanding the Trademark Opposition

Section 9(1), Section 11 and Section 21 of the Trademark Act 1999 permit for objection or opposition to the applied Trademark. In these two situations, the applied trademark can be stuck in the middle of the registration process. Objections are raised by the registrar or examiner when they see any similarities to the existing registered Trademark.

Trademark Opposition is raised by the Third party. When the Trademark is advertised in the journal. It is published for all, if any person or third party has any issue regarding the trademark they can raise opposition, within four months from the date of publication. Its main purpose is to avoid infringement or dissolving of anyone's intellectual property rights.

Grounds for Trademark Opposition

There are numerous reasons why trademark opposition raises. Some of the grounds for Trademark opposition are given below:

  • Confusing mark: If the applicant applied for a Trademark that already exists or is registered and may cause confusion among customers, that mark can be opposed by the third party.
  • Genericness: Any mark consists of the generic term, that determines any goods or service that can be denied or objected to.
  • Geographical Indication: If the applied Trademark indicates any geographical term such as any place name, that can’t be registered as a Trademark and can be opposed.
  • Well-Known Mark: Many brands in the marketplace have established a unique identity and have a well-known mark, and if an applicant applied for that mark so it is a high probability of objection.
  • Prohibited Symbols: If the applicant applied for a Trademark that denotes a national symbol, can raise an objection and it can’t be registered as a Trademark.
  • Famous Personality: Most of the marks or names symbolise many famous personalities. These types of names can be raised as Opposition because this mark can harm the reputation of that personality.
  • Prior User: That Trademark which is used by someone else whether it is registered or not but if they are the prior user of that mark, can raise objections for the applied mark that seems similar.

The Trademark Opposition Process

The trademark opposition process includes many steps that are given below:

Step 1: Filing Opposition Notice

When the trademark has been published in the journal that is open for the opposition. If anyone finds some issue so they can raise opposition against the applied trademark.

Here the opponent or third party has to fill Trademark opposition that is basically called “TM-O”. The opponent has to clear the ground of opposition and with this TMO the opponent has to attach all the supportive documents.

Step 2: The Counter-Statement or Notification to the Applicant

When the opponent files the notice of opposition, the applicant will get a notification regarding the opposed Trademark Registration. The applicant gets a copy of the opposition statement and other related documents from the opponent side.

It depends on the applicant that they want to proceed with the procedure otherwise they can refuse or abandon that applied trademark.

Step 3: Filing the Evidence

Within 2 months the applicant has to submit the counter statement in reply to the opposition. In this statement, they have to submit all the related documents in favour of their statements. The opponent also provides a copy of every piece of evidence to the applicant.

The applicant can also submit their relatable documents to the registrar as well as the opponent also. After that, the opponent will provide further documents to make their strong side.

Step 4: Hearing

After receiving the evidence from both sides (opponent and applicant) the registrar will conduct the hearing. In this Hearing, the registrar will give the equal opportunity to both parties to prove their sides. If the applicant will not present at the day hearing so the applied trademark will be abandoned and rejected.

Step 5: Rejected or Registered

After examining all the related evidence of the applicant and the opposition, the registrar decided whether the applied mark was registered or not. If the registrar is satisfied with the statements submitted by the applicant, the trademark will be accepted and registered. Otherwise, the applied trademark will be rejected or abandoned.

Purpose of Trademark Opposition

There are several purposes of trademark opposition some of these are given below:

  • TM opposition helps to protect the existing trademark rights.
  • TM opposition also prevents confusion among consumers that may be caused by a similar trademark.
  • There are several businesses that are in a race in the market and want to enhance their unique brand identity. Here TM opposition promotes fair competition among the traders or businesses.
  • Some product or brand has strong consumer reach and the confusing brand mark can loss of that reach therefore the TM opposition process aids to protect consumers’ interest.
  • The TM opposition process helps in enhancing transparency. This helps another applicant while registering their trademark.

How to Avoid Trademark Opposition Process

Trademark Opposition Process can be a stuck point for your registration process. It can increase the chance of refusal or rejection. There are some points mentioned below that help to avoid the chance of a Trademark opposition process:

  • The applicant has to conduct a comprehensive TM search before going to apply for the trademark application. TM search helps to give clarification about the availability of the trademark and aids to avoid the chance of objection and opposition during the registration.
  • To avoid the chance of trademark opposition, the applicant must hire a TM Attorney. This attorney has years of experience and they help to inform you of the complete procedure. “Litem Legalis” can be the best choice as your TM attorney.
  • When an individual or business wants to create a unique identity they must choose a strong and distinct mark as a trademark. It also helps to avoid the chance of opposition.
  • Once the trademark is completely registered, the owner must renew that trademark timely. Otherwise, that trademark can be abandoned and a chance for infringement. Timely renewable increases the chances of the future expansion of a business.

Why Litem Legalis?

Trademark Registration is a long process and higher chance of trademark opposition. Here, “Litem Legalis” will help you to get your TM registration in an easier and hassle-free way. “Litem Legalis” will be your best choice because of:

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Free Legal Advice

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Expert Lawyers

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Lowest Fees

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Quick Process

Conclusion

The trademark opposition process is also a main part of the Trademark Registration process. The TM opposition process also has many stages that include the filing of the TM-O, counter statements, reply and hearing. TM Opposition process helps to protect existing trademark rights. This process gives complete rights to an individual or business to raise their opposition and protect their brand identity.

However, the applicant has to submit all the related documents during the TM Registration. In case the applicant is stuck with the TM Opposition process so they have to submit all related and favourable statements to the registrar. To avoid these processes the applicant can take help from a professional TM attorney as well.

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Frequently Asked Questions (FAQs)

What is the cost of opposition filing?

The cost of the trademark opposition filing is ₹2700 for e-filing.and ₹3000 for physical filing.

What is the purpose of the Trademark Opposition process?

The trademark opposition process has many purposes such as preventing the solo rights of existing trademarks, preventing confusion, promoting fair competition, protecting consumer’s interests and also enhancing transparency.

What is the timeline for trademark opposition?

When the registrar publishes the trademark in the journal, the opponent has to file an opposition within four months of the advertisement.

What is the process of Trademark opposition?

The Trademark opposition process includes many steps such as filing the notice of opposition, counter-statements, evidence in support of the opposition, hearing process and registration or rejection.

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