How can a Trade mark be opposed in India? How to initiate Trade mark opposition proceedings in India?

Period within which notice of opposition can be filed- The Act prescribes that any person can file notice of opposition against the Trade mark which is advertised or re-advertised in the Trade Marks Journal within a period of four months from the date on which the trade mark application was advertised or re-advertised in the Trade Marks Journal, i.e. the date of publication of the Journal or the date on which it is made available to the public.

Any person can file notice of opposition in India and he is not required to have an application/registration in India to oppose any Trade mark. Further, on expiry of the four months deadline, no notice of opposition can be filed and the Trade mark proceeds to registration. The only recourse left thereafter is filing rectification action against the registration.

A Trade mark can be opposed on the following grounds:

  1. Absolute grounds of refusal as provided under Section 9 of the Act, i.e. the Trade mark not being distinctive or not being capable of distinguishing the goods/services of the Applicant from those of others.
  1. Relative grounds of refusal as provided under Section 11 of the Act, i.e. the Trade mark being phonetically, visually, conceptually, confusingly and deceptively similar/identical to the Opponent’s Trade mark.
  1. Other relevant grounds depending on the facts of the matter i.e. the applicants’ trade mark being well-known.

Well-Known/Famous Trade Marks In India:

The Indian Trade Marks Act, 1999 and Article 6bis of the Paris Convention provide for protection of well-known and famous trade marks. A proprietor of a well-known trade mark can rely upon the following provisions with regard to the well-known trade marks in India:

Section 11(6) of the Trade Marks Act, 1999: The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including-

 (i)    the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

 (ii)   the duration, extent and geographical area of any use of that trade mark;

 (iii)  the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

 (iv)  the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;

 (v)  the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognized as a well- known trade mark by any court or Registrar under that record.”

 Section 11(7) of the Trade Marks Act, 1999: “The Registrar shall, while determining as to whether a trade mark is known or recognized in a relevant section of the public for the purposes of sub- section (6), take into account-

(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trade mark applies.”

 

Section 11(8) of the Trade Marks Act, 1999: Where a trade mark has been determined to be well-known in at least once relevant section of the public in India by any Court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

 

Section 11(9) of the Trade Marks Act, 1999: “The Registrar shall not require as a condition, for determining whether a trade mark is a well- known trade mark, any of the following, namely:-

(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered;

(iii) that the application for registration of the trade mark has been filed in India;

(iv) that the trade mark-

(a) is well- known in; or

(b) has been registered in; or

(c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or

(v) that the trade mark is well- known to the public at large in India.”

 

Section 11(10) of the Trade Marks Act, 1999: “While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall-

 (i) protect a well- known trade mark against the identical or similar trade marks;

 (ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.”

Procedure after filing of notice of opposition-

  • The Registrar shall ordinarily serve a copy of the notice of opposition on the Applicant of the Trade mark within three months from the date of receipt of the same.
  • Within two months of receiving the notice of opposition, the Applicant shall file its counter statement specifying the facts as alleged in the notice of opposition that are admitted by the Applicant.
  • If the Applicant fails to file its counter statement within the stipulated time, then the Applicant’s Trade mark shall be deemed to have been abandoned for non-prosecution under Section 21(2).
  • If the Applicant files the counter statement, the opposition proceeds to the evidence stage.

EVIDENCE STAGE

  • The Registrar shall ordinarily serve a copy of the counter statement on the Opponent within two months from the date of receipt of the same.
  • Within two months of receiving the counter statement, the Opponent shall file its affidavit by way of evidence in support of the opposition.
  • The Registrar shall ordinarily serve a copy of the affidavit by way of evidence in support of the opposition on the Applicant within two months from the date of receipt of the same.
  • Within two months of receiving the affidavit by way of evidence in support of the opposition, the Applicant shall file its affidavit by way of evidence in support of the application.
  • The Registrar shall ordinarily serve a copy of the affidavit by way of evidence in support of the application on the Opponent within two months from the date of receipt of the same.
  • Within two months of receiving the affidavit by way of evidence in support of the application, the Applicant shall file its affidavit by way of evidence in reply.
  • An extension of time of one month is available for filing affidavit by way of evidence in support of opposition/application/reply. However, no extension of time is available for filing notice of opposition and counter statement.

HEARING STAGE

  • Thereafter, hearing is conducted for the opposition matter after hearing the parties and considering the evidence, the Registrar shall decide whether the Trade mark is to be accepted for registration or not. The decision of the Registrar made in the opposition proceedings can be challenged by an aggrieved person by filing an appeal before the Intellectual Property Appellate Board.

Please note that successfully opposing registration of a Trade mark would only stop the application from proceeding to registration. However, in order to prevent the Applicant from using the Trade mark, the Opponent needs to file suit for infringement/passing off in an appropriate court of law.

OPPOSITION DRIVES

However, due to huge backlog of opposition matters at the Trade Marks Registry, opposition proceedings may take longer than what is stipulated in the statute. In view thereof, to overcome the backlog of opposition matters, the Registry has initiated various drives such as Opposition Drive, Mediation and Reconciliation Measures and Abandonment Drive.