Trademark Opposition Procedure and its Solution
The holder of a registered trademark has the “exclusive right” to use the trademark concerning the goods in respect of which it is registered. He becomes entitled to the products in respect of which it is registered. He becomes entitled to the protection of his property rights in goods in respect of which he has got the trademark registered. If a registered trademark is infringed in the sense that another trader uses its essential features, he is liable for action against him for infringement of a registered trademark and can file for trademark opposition.
A trademark opposition is a legal claim to the right to register a particular trademark. A trademark opposition is initiated by filing a notice of opposition with the prescribed govt. fee. The notice of opposition must be filed within the specified time given for the opposition to be submitted.
Process of Registering Trademark
In the process of registering your trademark, there are many stages or levels an application goes through, and they are listed below:
- Send to Vienna Codification
- Marked for Examination
- Formality Check Pass
- Formality Check Fail
- Ready for Show Cause Hearing
- Accepted Before Advertisement
- Accepted & Advertised
There are two stages where the application of refusal can be raised against the registration of your mark. They are as follows:
The registrar raises an objection against your application for registration. Usually, the registrar raises the objections under Sections 9(1) or Section 11 of the Trademarks Act.
And the opposition is raised by the owner of the registered mark if there is any infringement.
Difference Between Objection and Opposition
|An objection is something where the trademark examiner objects to your application on specific grounds mentioned under Section 9 and 11 of Trademarks Act, 1999. The Trademark examiner raises an objection Reply needed to be filled within one month.
The reply is submitted through MIS-R. The application status shall appear as “objected”. There is no government fee for filing reply to an objection raised by the department.
|An opposition is the most significant remedy available to the owners for protecting their registered brands of getting infringed.
The Third-party gives Notice Of Opposition to the applicant.
Here, counter-statement or reply to the notice of opposition to be filed within two months.
The reply is submitted through the TM-O form. The application status shall appear as “opposed”.
Government fee for filing opposition is Rs. 2700
Trademark Status marked as “Opposed”
When the registrar reviews your application for trademark and finds that it qualifies for registration and has not been objected by the Trademark Examiner or if there was an objection raised by the department which has overcome, then in the next step your trademark gets published in the Trademarks Journal. The purpose behind publishing a Trademark in the Journal is to enable the public to view the trademark and submit an opposition against it.
When an opponent files an opposition, your trademark status is marked as ‘Opposed’.
The Time limit for filing an Opposition
According to section 21 clause 1 of Trademarks Act, 1999, any person may, within four months from the date of the advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the registrar, of opposition to the filling.
Who can file for Trademark Opposition?
- Any person can file the notice of opposition which includes, the owner of an earlier trademark application or registration covering a similar Trademark for similar goods; A person who has used the same or a similar trademark prior to the client, but who has not sought registration of the trademark; individuals; partnership firms; companies; Limited liability partnership, trusts or any other person whose rights are violated. Also, two or more persons who have the same issues against a trademark can be joined together as opponents and file for the opposition.
Grounds for filing online Trademark Opposition
Some of the grounds on the basis of which a person may file for Opposition Proceedings are listed below:
- If the trademark is similar or identical to an earlier or existing registered trademark.
- The mark is devoid of distinctive character.
- The mark is descriptive In nature.
- Application for the trademark is mala fide.
- The mark is to misguide the public or cause confusion amongst people.
- The mark is contrary to the law or is prevented by law.
How to file Notice of Opposition Online
The notice of opposition should be in writing with all the relevant details describing their mark and applicants mark and grounds in what manner the applicant’s mark is infringing there mark. The agent of the applicant or the applicant himself can file the notice of opposition by login to the IP India Online Filing of Trade Mark and select the option “File TM-O” by selecting “New Form Filing” and then selecting “Notice of Opposition” with the applicant’s application number with the relevant details and attaching notice of opposition with PoA and the prescribed government fee of Rs. 2700.
Stages of Trademark Opposition
The steps which are involved in the procedure of Trademark Opposition are as follows:
- Notice of Opposition: Any person can file for notice of opposition that is published in the trademark journal within four months from the date of broadcast.
- Counter-Statement: the applicant or the agent within two months of the acknowledgement of the notice of opposition can file for counter-statement. In case the Counter-Statement is not filed within the prescribed time, it will be deemed that the applicant has abandoned the Trademark application.
- Hearing: upon the notice of opposition, counter-statement is filled with all the evidence, then, the Registrar shall call the applicant for a hearing, and the matter will be decided upon merits.
- Rejection or Registration: If the registrar decides in favour of the applicant, the trademark will be registered, and the registration certificate will be issued. If the registrar decides against the applicant, then the application will be rejected.
The Solution to Notice of Opposition
The solution to Notice of opposition is counter-statement or reply to the opposition which needs to be filled by the Applicant or the agent of the applicant within two (2) months. If the applicant fails to file the reply or the counter-statement, the application will be Abandoned by the department.
In Banga Watch Co. v N.V. Philips, (1983), the respondent instituted an action against the appellants to restrain them from using the name of ‘Philips’ on watches, clocks, etc. to pass off their goods as those of the plaintiffs. The respondent company is engaged under the trademark “Philips” in the manufacturing of a wide range of electrical and non-electrical goods, e.g. radios, lighting products, refrigerators, medical apparatus, darkroom timers, multiple electric clocks and timers. The appellants-defendants are carrying on business in the sale of watches, clocks, etc. under the trademark “Philips” since 1954.
In the present case, the court held that based on the facts the trademark “Philips” to the knowledge of a common man was associated with the products of the plaintiffs and that watches or clocks bearing the said name would lead an ordinary customer to believe that it was their product. The defendants are, thus, restrained from using the said trademark.
In Parle Products (P) LTD. v J.P. And Co. , in this case, the plaintiff was manufacturers of biscuits and confectionery and are owners of certain registered trademarks. The word “Gluco” used on their wrapper with its colour scheme, general set up and collocation of names registered under the Trade Marks Act, 1940. This wrapper is used in connection with the sale of their biscuits known as “Parle’s Gluco Biscuits” printed on the wrapper. The wrapper is of buff colour and depicts a farmyard with a girl in the centre carrying a pail of water and cows and hens around her on the background of a farmyard house and trees. The plaintiffs claim that they have been selling their biscuits on an extensive scale for many years past under the said trademark, which acquired great reputation and goodwill among the public. They claimed to have discovered in March 1961, that the defendants were manufacturing selling and offering for sale biscuits in a wrapper which according to them was deceptively similar to their registered trademark. The plaintiffs assert that this act of the defendant constitutes an infringement of their trademark rights.
In the present case, the court held that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background, there is a farmhouse with a fence. The word “Gluco Biscuits” in one and “Glucose Biscuits” on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other. An ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendant’s wrapper is deceptively similar to the plaintiffs which were registered. Thus the court held that the defendant had infringed the registered trademark of the plaintiffs.