Understanding Trademark Opposition: Procedures, Grounds, and Documentation

You may wonder how opposing or being opposed in the trademark registration process can benefit your brand. The publication of trademarks in the Trademark Journal serves as an important step in protecting your intellectual property, and here’s why:

Increased Brand Visibility

• When your trademark is published in the Trademark Journal, it effectively acts as an advertisement to your target audience. This helps increase awareness of your brand and the goods or services you offer, reaching more potential customers.

Opportunity to Protect Your Brand

• Trademark publication gives registered trademark owners a fair opportunity to oppose similar or identical trademarks that could cause confusion in the marketplace. This opposition process helps prevent potential legal issues down the road, ensuring that your brand remains distinct.

Clearer Market for Consumers

• By publishing trademarks in the Journal, the public is provided with clarity. Consumers will be less likely to confuse your brand with others, which helps maintain the integrity of your business and builds consumer trust.

As per Section 21 in The Trade Marks Act, 1999, “Any person may, within four months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on an application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.”

In simple terms, anyone may file opposition for the trademark if they find that trademark in anyhow manner similar to their trademark or believes that the trademark should not be registered on any other valid legal ground. If more than one person has the same issue against the particular trademark, they can collectively take part against that particular trademark registration. For example, if someone applies for trademarking the word “DELHI”, a collective opposition could be raised against the trademark registration from various individuals, groups, societies, etc.

Anyone can file opposition against a trademark, but they should know the grounds on which trademark opposition can be raised. There are several grounds on which trademark Opposition can be filed:

• If the trademark is similar or identical to an earlier or existing registered trademark
• If the mark is devoid of distinctive character
• If the mark is descriptive in nature
• If the application for the trademark is made with bad faith
• If the mark is customary in the current language or the established practices of business
• If the trademark is likely to deceive the public or cause confusion
• If the mark is contrary to the law or is prevented by law
• If the trademark is prohibited under the Emblem and Names Act, 1950
• If the mark contains matters that are likely to hurt religious feelings of any class or section of people

Anyone can file opposition against a trademark, provided they are aware of the grounds on which trademark opposition can be raised. Trademark opposition can be filed on various grounds, and the following documents are required to initiate the process:

1. Details of applicant
   • Name: Full name of the applicant opposing the trademark.
   • Nationality: The nationality of the applicant.
2. Power of Attorney
   • A power of attorney must be submitted, allowing an attorney to act on behalf of the applicant and take necessary actions in the opposition process.
3. Affidavit
   • An affidavit is required, containing key information about the trademark and its user. It serves as a declaration supporting the opposition.
4. Details of the Opposed Mark
   • Clear details of the trademark against which the opposition is being filed. This should include the name of the trademark and the grounds on which the opposition is raised.
5. Verification of Trademark Opposition
   • The applicant must verify the drafted opposition, confirming its accuracy and completeness before submission.

Verification of drafting of trademark opposition has to be made by the applicant.

Raising an opposition against a trademark requires a notice of trademark opposition filed by any individual/company within 4 months of the date of advertisement or re-advertisement of the trademark in the Trademark Journal. A Form TM-O is required to be filled in a prescribed manner along with the application charges of Rs. 2,700/-. The trademark opposition notice must contain the following details:

Raising a trademark opposition is a vital legal mechanism to protect brand identities and ensure that trademarks meet established standards. Understanding the grounds, required documentation, and procedural steps is essential for effectively challenging a trademark application. Given the complexities involved, consulting with legal experts can provide valuable guidance throughout the opposition process.