The ownership of a trademark is essential for being able to market a brand without any infringement by an entity seeking to disrupt the business and cause loss to the owner of the brand. In the last few years, it has become quite possible to do trademark registration online easily.
During the trademark registration process, all members of the public have the opportunity to oppose a trademark application and prevent the registration process of the trademark. In this article, we review the trademark opposition process and how the stakeholders can file trademark opposition.
Who can oppose a trademark?
According to Sec 21 of the Trademark Act, “any person” can file an opposition to a trademark claim, regardless of their commercial or personal interests or lack of the same. If they stand to profit from the opposition or not does not matter.
Following the publication of the trademark in Trade Marks Journal, any entity may put forth an objection about the registration of the trademark for a period of 3 months (it may be extended at most by 30 days.) Applications for trademark opposition can only be filed in the Trademark Registration Office and can’t be taken directly to the court or for arbitration. If the opposition is successful, the registration of the trademark will be denied. If the application for the opposition is rejected, the trademark is registered.
One can file trademark opposition only after being able to provide sufficient details about –
The ground of opposition means detail about any mark or word or logo which conflicts with the existing trademark. The owner can oppose the trademark registration even if a single symbol is similar or identical with the applied trademark.
1. Details of the trademark about which the opposition is being submitted. This would also require the application number of the trademark, the list of goods and services about which the trademark has been filed, the name of the applicant of the trademark.
2. Details related to an already existing trademark based on which the trademark opposition application is being filed. These details would also include the name of the applicant of the original trademark, its number and year of issue and the types of products and services it represents.
3. Details related to who is opposing the trademark application. If it is the owner of an earlier trademark who is applying for trademark opposition then the name and address of his business.
TM Objection vs. TM Opposition.
It has to be noted that there is a considerable difference between objection and opposition. Only the trademark examiner can raise an objection, but members of the public can only oppose.
The status of a trademark is changed from Advertised” to “Opposed” when opposition has been filed by a third party. The trademark opposition will be communicated to the applicant. It establishes the reasons upon which the said opposition was based. It is necessary that the applicant submit a counter notification using Form TM-O within two months after receiving the notice of opposition. Otherwise, it is assumed that the applicant is not interested in contesting the opposition. Consequently, the application for registration of a trademark will be canceled if the trademark registrar has not received such counterclaim within the fixed period.
It is essential to know that an extension of time is not allowed to send a reply to the opposition. The trademark registrar then calls both parties with their evidence. If the decision is favorable towards the applicant, the trademark is thereafter registered in his name. However, if the decision is unfavorable to the applicant, he may appeal to a superior court. The court can confirm, amend or cancel the decision taken by the registrar.