What is Trademark Opposition?
Trademark opposition is a legal proceeding that allows third parties to challenge the registration of a trademark application after it has been accepted by the Trademark Registry and published in the Trademark Journal. This is a critical stage in the trademark registration process that protects existing trademark owners and maintains the integrity of the trademark register.
Under Section 21 of the Trade Marks Act, 1999, any person may give notice in the prescribed manner to the Registrar of their opposition to the registration of a trademark. The opposition period is strictly limited to 4 months from the date of publication in the Trademark Journal.
Key Aspects of Opposition
- • Protects existing trademark owners from confusingly similar marks
- • Prevents registration of marks that are deceptive or against public interest
- • Maintains the quality and distinctiveness of the trademark register
- • Provides a cost-effective alternative to court litigation
- • Allows rectification of wrongful acceptance by the Registry
Grounds for Opposition
The Trade Marks Act, 1999 provides various grounds on which a trademark application can be opposed. These grounds can be broadly categorized as absolute grounds and relative grounds.
Absolute Grounds (Section 9)
Lack of Distinctiveness
Marks that are devoid of any distinctive character and cannot distinguish goods/services of one person from another.
Descriptive Marks
Marks that consist exclusively of signs or indications that may serve to designate the kind, quality, intended purpose, or other characteristics of goods/services.
Generic/Common Names
Marks that have become customary in the current language or bona fide trade practices.
Deceptive Marks
Marks that are of such nature as to deceive the public or cause confusion regarding the nature, quality, or geographical origin.
Relative Grounds (Section 11)
Identical or Similar Earlier Marks
Conflict with earlier trademarks that are identical or similar for identical or similar goods/services, where there exists a likelihood of confusion.
Well-Known Trademarks
Protection of well-known trademarks under Section 11(2), even for different goods/services, if use would take unfair advantage of or be detrimental to the distinctive character/repute.
Prohibited Marks
Marks protected under Emblems and Names (Prevention of Improper Use) Act, 1950; marks contrary to law or morality; and marks prohibited under the Geographical Indications of Goods Act.
Other Grounds
- • Bad faith filing by the applicant
- • Non-use of the mark by the applicant in case of prior user opposition
- • Likelihood of dilution of distinctive character of famous marks
- • Violation of copyright or design rights
- • Use of name/representation of living person without consent
Who Can Oppose a Trademark?
Under Section 21 of the Trade Marks Act, 1999, "any person" may give notice of opposition. This is interpreted broadly and includes:
| Category of Opponent | Basis of Opposition | Evidence Required |
|---|---|---|
| Registered Trademark Owner | Prior registration for identical/similar mark | Registration certificate, use evidence |
| Prior User | Earlier adoption and continuous use | Sales figures, invoices, advertisements |
| Well-Known Mark Owner | Reputation and trans-border goodwill | Global presence, advertising spend, media coverage |
| Licensee/Assignee | Contractual rights from trademark owner | License/assignment deed, consent letter |
| Consumer Associations | Public interest and consumer protection | Organization registration, public interest justification |
| Any Concerned Person | Legitimate commercial or public interest | Statement of legitimate interest |
Opposition Timeline
The opposition process follows a strict timeline with specific deadlines for each stage. Missing deadlines can result in abandonment of the opposition.
Stage 1: Publication in Journal
Trademark application is published in the Trademark Journal after acceptance by the Registry.
Stage 2: Notice of Opposition (Within 4 months)
Opponent files Form TM-O with grounds of opposition and supporting documents.
Stage 3: Counter-Statement (Within 2 months)
Applicant files response addressing each ground of opposition.
Stage 4: Evidence in Support (Within 2 months)
Opponent files evidence by way of affidavit supporting the opposition.
Stage 5: Evidence in Reply (Within 2 months)
Applicant files evidence in reply to opponent's evidence.
Stage 6: Evidence in Rejoinder (Within 1 month - Optional)
Opponent may file evidence strictly in reply to applicant's evidence.
Stage 7: Hearing and Decision
Registrar hears both parties and passes an order either allowing or refusing registration.
Filing Opposition Process
Filing a trademark opposition requires careful preparation and adherence to procedural requirements. Here is the step-by-step process:
Step 1: Pre-Filing Analysis
- • Conduct detailed trademark search to establish prior rights
- • Analyze the opposed mark and its similarity to your mark
- • Gather evidence of use, reputation, and goodwill
- • Identify the strongest grounds for opposition
- • Assess the strength of the opposition case
Step 2: Draft Notice of Opposition
The Notice of Opposition (Form TM-O) must include:
- • Application number and details of the opposed mark
- • Opponent's name, address, and nationality
- • Details of the opponent's trademark rights (registration/pending application)
- • Detailed statement of grounds with legal basis
- • Facts supporting each ground of opposition
- • Relief sought (refusal of registration)
Step 3: Online Filing
File Form TM-O through the IP India e-filing portal:
- • Login with digital signature (Class 2 or 3)
- • Select "File Opposition" under Trademark Services
- • Enter opposed application number
- • Upload Form TM-O and supporting documents
- • Pay government fees online
Government Fees for Opposition
| Filing Mode | Fee per Class |
|---|---|
| E-filing (Online) | ₹2,700 |
| Physical Filing | ₹3,000 |
Evidence Stages
The evidence stage is crucial as it determines the strength of each party's case. Evidence is filed by way of affidavit and typically includes:
Evidence in Support (by Opponent)
- • Affidavit of use with sales figures, invoices, and bills
- • Advertising and promotional materials
- • Media coverage and press releases
- • Awards and recognitions
- • Survey reports showing public recognition
- • Evidence of online presence and social media
- • Expert opinions on likelihood of confusion
Evidence in Reply (by Applicant)
- • Evidence distinguishing the marks
- • Proof of honest adoption and use
- • Evidence of concurrent use without confusion
- • Differences in channels of trade and consumers
- • Evidence of distinctiveness acquired through use
Evidence in Rejoinder (Optional)
The opponent may file rejoinder evidence strictly limited to replying to new matters raised in the applicant's evidence.
Hearing and Decision
After completion of evidence stages, the Registrar schedules a hearing where both parties present oral arguments through their authorized representatives (trademark agents or advocates).
Hearing Process
- • Notice of hearing is issued at least one month in advance
- • Opponent presents arguments first (burden of proof)
- • Applicant responds to opposition arguments
- • Opponent may provide rejoinder arguments
- • Written submissions (briefs) may be filed after hearing
Possible Outcomes
Opposition Allowed
The opposed trademark application is refused registration. The applicant may appeal to IPAB.
Opposition Dismissed
The opposed trademark proceeds to registration. The opponent may appeal to IPAB.
Appeal Process
An appeal against the Registrar's decision lies with the Intellectual Property Appellate Board (IPAB). The appeal must be filed within 3 months from the date of the decision.
IPAB Appeal Procedure
- • File appeal in Form TM-12 within 3 months
- • Pay appeal fee (₹5,000 for individual/startup/MSME, ₹10,000 for company)
- • Grounds of appeal must specify errors in Registrar's decision
- • Fresh evidence generally not allowed (finality of evidence rule)
- • IPAB may pass orders confirming, modifying, or reversing Registrar's decision
Further Appeals
From IPAB's decision, a writ petition can be filed before the High Court under Article 226/227 of the Constitution, or a regular appeal under the Trade Marks Act depending on the nature of the order.