This article has been written by Rajat Srivastava, a first-year student at Army Institute of Law, Mohali

Abstract

The piece covers crucial aspects, including eligibility criteria, time limits, the role of the registrar, and the distinction between trademark objection and opposition. The comprehensive exploration delves into the trademark opposition procedure, grounds for opposition, and the significance of Form TM-5. With an emphasis on legal definitions and important case laws, the article provides valuable insights for businesses navigating the intricate terrain of trademark protection, offering clarity in the competitive market landscape.

Introduction

. In our highly competitive business landscape, it is crucial for individuals, particularly entrepreneurs, to safeguard their brand identity by trademarking slogans, logos, or any distinctive elements that define their business. This legal protection prevents others from capitalizing on their established goodwill. While initiating the trademark application is the initial step, encountering obstacles during the process is not uncommon. After successfully registering a trademark, it undergoes publication in a journal, opening the door for potential opposition from any interested party.

Several questions arise in this context, addressing the intricacies of trademark opposition:

• Who Can Oppose a Trademark?
  • Is opposition open to anyone, or are there specific criteria for eligibility?
• Time Limit for Opposition
  • What is the prescribed time frame within which a party can oppose a published trademark?
• Significance of Trademark Journal
  • Why does the registrar opt for a journal publication, enabling interested parties to voice opposition?
• Role of the Registrar in Opposition
  • What role does the registrar play in managing and overseeing the opposition process?
• Final Verdict on Trademark Opposition
  • Who holds the ultimate authority in deciding the outcome of a trademark opposition?
• Trademark Objection vs. Trademark Opposition
  • Is there a distinction between a trademark objection and a trademark opposition?
• Eligibility Criteria for Filing Opposition
  • What criteria must be met for an entity to file a legitimate opposition against a trademark?
• Understanding Form TM-5
  • What is the significance and procedure associated with Form TM-5 in the context of trademark opposition?
• Trademark Opposition Procedure
  • What are the detailed steps involved in filing a trademark opposition, ensuring a fair and transparent process?

By addressing these questions comprehensively, we aim to shed light on the nuanced aspects of trademark opposition, offering clarity to businesses seeking to protect their intellectual property in an increasingly competitive market.

What is Trademark?

The legal definition of the term “trademark” is articulated in the Trade Marks Act of 1999, specifically under Section 2(zb). This provision asserts that a “trade mark” encompasses any visually identifiable mark possessing distinctive characteristics that differentiate products or services originating from the same company. This classification extends beyond conventional logos, encompassing various elements such as the shape of products, packaging, and even combinations of colors.

Moreover, Section 2(m) of the Act provides a comprehensive definition of the term “mark,” which includes a wide array of elements such as devices, logos, titles, letters, stamps, names, signatures, words, numbers, capitals, packaging, color combinations, as well as any accessory or assembly associated with a product or service.

Process of opposition of trademark

In accordance with Section 21 of the Trademark Act, any individual has a four-month window from the date of the advertisement or re-advertisement of a trademark registration application to formally oppose it. This opposition must be submitted in writing, following the prescribed method and accompanied by the designated fee. Once received, the Registrar is responsible for serving a copy of the opposition notice to the applicant for registration.

Section 21(2) further stipulates that within two months of receiving the copy of the opposition notice, the applicant must furnish a counter-statement to the Registrar. Failure to do so within the specified timeframe results in the applicant being deemed to have abandoned their trademark application. Consequently, the trademark stands at risk of cancellation, and the intended trademark may not be granted.

To summarize, the process involves a four-month window for opposition after the publication of the trademark, followed by a two-month period for the applicant to respond with a counter-statement. Adherence to these timelines is critical to the successful resolution of trademark opposition proceedings.

Grounds for Opposing a Trademark:

• Identical or Similar Trademarks:
  • The aspiring trademark is identical or substantially similar to an existing registered trademark.
• Lack of Distinct Character:
  • The proposed trademark lacks distinctiveness, making it indistinguishable from common, generic, or non-unique symbols.
• Descriptiveness:
  • The trademark merely describes the characteristics or qualities of the product or service, lacking inherent distinctiveness.
• Malicious Intent:
  • The application for the trademark has been filed with malicious intent, indicating an ulterior motive contrary to fair business practices.
• Common Usage:
  • The proposed trademark is customary in the current language or established practices of the relevant business sector.
• Likelihood to Deceive:
  • The trademark has the potential to mislead or deceive the public regarding the nature, quality, or origin of the goods or services.
• Contravention of Law:
  • The trademark is in violation of existing laws or is otherwise prohibited by legal statutes.
• Emblem and Names Act, 1950:
  • The trademark is prohibited under the Emblem and Names (Prevention of Improper Use) Act, 1950, which safeguards national symbols and emblems.
• Religious Sensitivity:
  • The trademark includes elements likely to offend or hurt the religious sentiments of a particular class or section of the population.
• Obscenity or Immorality:
  • The trademark contains explicit or immoral content that goes against accepted societal norms.
• Geographical Misrepresentation:
  • The trademark falsely suggests a specific geographical origin that is misleading or inaccurate.
• Conflict with Prior Rights:

• The proposed trademark infringes upon the established rights of another entity, such as prior trademark registrations or common law rights.

Understanding these diverse grounds for opposition is crucial for both trademark applicants and those seeking to protect their existing rights. It ensures a fair and comprehensive evaluation of trademark applications, promoting a balanced and competitive business environment.

Following the submission of evidence by both parties— the aspiring business seeking the trademark and the opponent—the Registrar undertakes a crucial role in adjudicating the matter. Subsequently, a preliminary hearing date is scheduled, and the presence of both parties is mandatory. In the event of the opposition party’s absence, the opposition is rendered null, and the trademark is awarded to the aspiring business. Conversely, if the aspiring business fails to attend the hearing, the trademark application stands cancelled, and no further proceedings occur.

The pivotal hearing serves as a platform for the presentation of arguments, examination of evidence, and clarification of any points in contention. Post this hearing, the Registrar, equipped with the information provided and the arguments presented, assumes the responsibility of delivering the final verdict. This decision is paramount in determining the fate of the trademark, either affirming its registration or resulting in its rejection.

This comprehensive process underscores the significance of active participation by both parties in the hearing, emphasizing the procedural importance of the Registrar’s final decision in resolving trademark opposition cases.

What is Form TM-5?

Form TM-5 serves as a crucial document in the process of opposing a trademark. This formal instrument is required to be filed by the opposing party and holds specific information essential for a comprehensive assessment of the opposition. The form encompasses two primary sections: details about the trademark in question and information about the opposing party.

• Trademark Details:
  • In the first section of Form TM-5, the opposing party is required to provide detailed information about the trademark they are opposing. This includes specifics such as the trademark name, design, or any distinctive elements associated with it. Additionally, the form mandates a thorough articulation of the reasons supporting the opposition. This section serves as a platform for the opposing party to present a clear and substantiated case against the registration of the targeted trademark.
• Opposing Party Information:

• The second section of the form is dedicated to information about the opposing party. This involves providing details about the entity or individual filing the opposition, including their name, address, and any other pertinent contact information. By furnishing these details, the opposing party ensures transparency in the process, allowing for effective communication and legal proceedings.

Effectively, Form TM-5 serves as a structured and standardized means for the opposing party to articulate their objections to a trademark registration. It streamlines the opposition process by requiring specific information essential for a fair and informed evaluation. The careful completion of this form is pivotal in facilitating a well-documented and legally sound opposition to the trademark in question.

Trademark Opposition vs Trademark Objection

• Nature of the Proceedings:
  • Trademark Objection: It occurs during the examination process by the trademark examiner. The objections may relate to various aspects such as similarity to existing trademarks, violation of rules, or incomplete documentation.
  • Trademark Opposition: It is a separate legal proceeding initiated by a third party after the trademark has been accepted by the examiner and published. Oppositions are typically based on the grounds that the registration of the trademark would infringe upon the rights of the opposing party.
• Initiator of the Action:
  • Trademark Objection: Raised by the trademark examiner during the examination of the application.
  • Trademark Opposition: Initiated by a third party, usually a competitor or someone with a legitimate interest, who opposes the registration of the trademark.
• Fees:
  • Trademark Objection: Typically, no additional fees are required to respond to an objection raised by the examiner during the application process.
  • Trademark Opposition: The party opposing the trademark is usually required to pay a fee for filing the opposition.
• Response Time:
  • Trademark Objection: The applicant is generally required to respond within one month from the date of receiving the objection.
  • Trademark Opposition: The applicant has a longer period, often around four months, to respond to the opposition.
• Stage in the Registration Process:
  • Trademark Objection: Occurs during the initial stages of the trademark registration process.
  • Trademark Opposition: Takes place after the trademark has been accepted by the examiner and published in the official gazette.
• Outcome:
  • Trademark Objection: The resolution involves addressing the concerns raised by the examiner to proceed with the registration.
  • Trademark Opposition: The outcome can vary; it may result in a settlement, withdrawal of the application, or a full legal hearing to determine whether the trademark should be registered.

These distinctions highlight the different stages, processes, and parties involved in trademark objection and opposition.

Important Case Laws pertaining to Opposition to Trademarks 

• Indo-Pharma Pharmaceutical vs Pharmaceutical Company Of India Defendants argue continuous use of BUTACORT since 1962, acknowledged by Deputy Registrar in trademark proceedings. Seeking Section 33 protection despite plaintiffs’ opposition. Plaintiffs presented evidence, including the Deputy Registrar’s order; defendants submitted sales records for support. Legal dispute revolves around prior usage rights and trademark resemblance.
• Sardar Gurudas Singh Bedi vs Union Of India And Ors.- The opposition to trademark registration must be filed within the prescribed time, typically four months from the date of application advertisement. Trade Mark Rules, 2002, Rule 47(2) allows a three-month window for opposition filing, extendable by one month with proper application. The case law emphasizes the discretionary nature of time limits, viewing them as serving justice rather than rigid constraints, as seen in the interpretation of Rule 53 in Kantilal Tulsidas Jobanputra v. Registrar of Trade Marks.
• Munira Virani And Anr vs The Registrar Of Trade Marks – The court notes that a false statement accusation is unsubstantiated, and the plaintiff’s actions, including opposition, contradict acquiescence. The court finds the defendant fails to present compelling evidence supporting the acquiescence defense.

References

• This case law was originally written and published on the Indian Kanoon website. The link for the same is herein. https://indiankanoon.org/docfragment/430870/?formInput=opposition%20to%20a%20trade%20mark
• This case law was originally written and published on the Indian Kanoon website. The link for the same is herein. https://indiankanoon.org/docfragment/110801684/?formInput=opposition%20to%20a%20trade%20mark
• This case law was originally written and published on the Indian Kanoon website. The link for the same is herein. https://indiankanoon.org/docfragment/1247162/?formInput=opposition%20to%20a%20trade%20mark
• Trade Marks Act, 1999