This article has been written by Mr. Arjun Singh Tamang, a 2nd year student of Faculty of Law, University of Delhi.

Registration of trademark in India is done under the Indian Trademarks Act, 1999. A trademark is a type of intellectual property that consists of a sign, design, symbol, or statement that is used to distinguish one source’s products or services from those provided by another. To get registration done of trademark, the real owner has to submit an application to the Registrar of Trademarks in Registry office. The Registrar will the review the application and if he is satisfied that it is not violating any provision of law, he will publish a trademark advertisement of the application in the trademark journal and will provide the receipt of the same.

According to the provisions of Indian Trademark Act, 1999 Any Person may submit an opposition notice to the trademark registration that has been published in the Journal. The Registry of Trademark is the place where the application is filed and it is the same where the opposition is to be filed. The trademark registry after receiving the opposition will hold a hearing to decide about the trademark registration if it receives any opposition to the trademark.

The whole procedure or process through which any person can file trademark opposition is mentioned in the Trademark Act, 1999 and Trade Marks Rules, 2017.

Who can oppose a trademark?

According to Section 21 of the Trademark Act, 1999 “Any person” can file an opposition of trademark registration by writing a notice to the Registrar within the period of four months from the date of advertisement.

A trademark can be opposed by any person who includes any client, public, competitor business, or any other individual. Additionally, the opposing party must have previously had a registered trademark.

Both parties i.e. applicant and opposing party will be there when the Registrar will decide whether the trademark should be registered or not after an opposition has been filed.

Grounds for Trademark Opposition 

Following are the grounds on which any person can file an opposition:

1. The Trademark for which registration application is filed is way too similar or identical to the existing registered trademark 

2. The nature of trademark is descriptive.

3. The trademark is lacking distinctive features.

4. The trademark registration application is made with malicious intentions.

5. The trademark might create confusion I’m public.

6. Trademark may carry symbol or phrase which may hurt the religious sentiments of nay section or group of people.

7. The trademark suggested in application is prohibited as per The Emblem and Name Act 1950.

Procedure to oppose a trademark 

Step 1- Notice of Trademark opposition 

Any person may submit a notice in Form TM-O and by making payment of fees of opposition to a trademark that appears in the trademark journal within four months of the first date of appearance.

Details about the application (trademark registration application), the opposing party, and the grounds for resistance should all be included in the notice. Within three months of receiving the objection notice, the Registrar must deliver a copy of the notice of opposition to the applicant (person who submitted the trademark registration application).

Step 2- Counter-statement for notice of opposition 

The Registrar after receiving a notice of opposition would serve a copyright of the same to the applicant. The applicant shall file the counter-statement within the time period of two months.

In case of failing to do so, the trademark registration application will be declared as “Abandoned”. It means that the applicant wants to cancel his application as he is not interested in it.

Step 3 – Evidence Stage 

Any Person who is opposing the registration has to bring evidences to support his/her contentions in the notice to the Registrar within two months period from the date of receiving the copy of the applicant’s counter-statement.

All the copies of the evidences should be sent to the applicant by the opposing party.

Now it is the applicant who will submit the evidences in support of registration of trademark within two months from the date of receiving evidences copy from the opposition party.

Now Applicant shall file both the evidences to the Registrar and opposing party.

Step 4 – Hearing

After receiving the evidences of both the parties the Registrar shall send the notice containing the date of the hearing. Hearing will be based on Notice, counter-statement and evidences present by both the parties. The registrar will hear the case on merits and by chance if a party fails to be present on stated date, there will be ex parte decision against them. The decision of the Registrar will be sent to the parties in writing at the address they have provided.

Step 5 – Appeal

Once the Registrar has made the decision after hearing and evaluating evidences, if either of the parties is not happy with the decision. He can challenge the decision either by filing a review petition with the Registrar or can appeal to the Intellectual Property Appellate Board.

Time limit for Trademark Opposition 

Once the trademark application is published for advertisement, any person can raise an opposition of registration within a period of three months from the date of advertisement and it can be extended up to one month. Opposition can only be filed at Registrar office. 

Relevant Case laws

Parle Products (P) LTD. v J.P. And Co. (1972)

Plaintiff was a company having business of manufacturing biscuits and confectionery with registered trademark. They used the term “Gluco” with a specific design and logo on the wrappers. The plaintiff alleged that the defendant used the same design and color which is quite deceptive in nature although the name is different “Glucose”. The court held that the defendant used the design, colour, even size is quite similar which will definitely create confusion and consumer might think that they are the same. Therefore court held that there is infringement of trademark by the defendant.

DM Entertainment v. Baby Gift House and Ors.

In this case the defendant is a company which produced miniature dolls of Punjabi Singer Diler Mehndi and sold it and made huge profit. The plaintiff is the company who manages all the rights, interests and titles of artist and hence was not happy with defendant. The plaintiff submitted that Defendant Company did use the artist person character with his proper authority.

Banga Watch Co. v N.V. Philips (1983)

In this case, the respondent was using registered trademark “Philips” and were in the business of manufacturing wide ranges of products like watches, refrigerator, radios, clocks, electric clocks and timers etc. The appellant were using the same name to sell off their watches. The court held that Banga Watch Co. would not use the word “Philips” as to the common people it looks like it is of respondent’s brand and therefore the court restrained the defendant-appellant from using the trademark.

Conclusion 

Opposition of trademark can lead to two situations. First if it is not opposed or opposed but was able to satisfy the Registrar then the Trademark will be registered. Second it is opposed by any person and registration of trademark will be dismissed. But what is important is that a trademark should be registered as it protects it from the misuse by others and helps in creating goodwill.

References 

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