When a trademark application is accepted by the Trade Marks Registry after examination, it is advertised in the official Trade Marks Journal. This advertisement invites the public to oppose the registration within a prescribed period. If your mark reaches this stage, you may either face an opposition filed by a third party, or you may yourself wish to oppose a mark advertised by someone else.
Key deadline: Any person may file a Notice of Opposition within four months of the date of advertisement of the mark in the Trade Marks Journal. This period is not extendable under normal circumstances.
Who Can File an Opposition?
Under Section 21 of the Trade Marks Act 1999, any person may oppose the registration of an advertised mark — not just the owner of a conflicting registration. This broad standing means that even a person who uses a mark without formal registration can file an opposition. Grounds may include:
- Identity or similarity with an earlier registered mark under Section 11
- Likelihood of confusion or deception among consumers
- The mark being descriptive or devoid of distinctiveness under Section 9
- Bad faith in the application
- The applicant not being the true owner of the mark
Stage 1: Notice of Opposition
The opponent initiates proceedings by filing a Notice of Opposition in Form TM-O along with the prescribed fee. The Notice must clearly set out the grounds of opposition, the opponent's interest, and the facts relied upon. A well-drafted Notice of Opposition is critical — poorly pleaded grounds cannot generally be introduced later in the proceedings.
Stage 2: Counter-Statement
Once the Notice of Opposition is served, the applicant has two months to file a Counter-Statement in Form TM-O. The Counter-Statement must admit or deny each allegation in the Notice and set out the applicant's case. Failure to file a Counter-Statement within this period results in the application being deemed abandoned.
Practice note: The Counter-Statement is a pleading document — courts have held that parties are bound by the positions taken in their pleadings. An inadequate or evasive Counter-Statement can significantly weaken the applicant's case at the hearing stage.
Stage 3: Evidence in Support of Opposition
After the Counter-Statement is filed, the opponent has two months to file evidence in support of opposition by way of an affidavit. This evidence typically includes proof of earlier use, consumer surveys, sales figures, and advertising expenditure.
Stage 4: Evidence in Support of Application
After receiving the opponent's evidence, the applicant has two months to file evidence in support of the application — also by affidavit — rebutting the opponent's evidence and establishing the applicant's own rights.
Stage 5: Evidence in Reply
The opponent may then file reply evidence within one month. This stage is limited to rebuttal and must not introduce new grounds.
Stage 6: Hearing
After evidence is complete, the matter is listed for a hearing before the Registrar of Trade Marks. Both parties or their authorised agents present oral arguments. The Registrar then issues a reasoned order either allowing or rejecting the opposition.
Appeal from Registrar's Order
An order of the Registrar in opposition proceedings can be appealed to the Intellectual Property Division of the High Court having jurisdiction, and thereafter to the Division Bench and ultimately to the Supreme Court of India.