This article is written by Team LegalWiz.
A trademark helps in distinguishing different goods and services, by creating an identity that makes the brand stand out in the market. If it is not secured, it would lose its distinct feature and it won’t be able to create a reputation in the market. Trademark opposition is a stage where a third party can stop an individual or a company from obtaining registration of a trademark that is not distinct or is already being used in the market. This is to avoid any confusion among the consumers or users regarding the brand or the company, they are availing services or good form. It prevents dilution of the brand value of already existing trademarks or well-known marks and also secures their exclusivity. Trademark opposition and trademark objection are two different stages and there is always confusion among masses about them. This article would bring some clarity between the two and would explain the concept of trademark opposition in brief.
Objection vs. Opposition
A trademark before getting registered goes through many stages that check its registrability. One of the initial stages of refusal is trademark objection, which is instituted by the Trademark Examiner from the Registry. An objection in the most cases can be overcome by proper representation before the registrar.
Some common grounds for objection are:
- Lack of distinctiveness (Section 9),
- Similarity with pending or registered marks (Section 11),
- Usage of geographical names,
- International proprietary names,
- Offensive or obscene words as a part of or as a trademark
Trademark Opposition is instituted by a third party after the application is accepted by the Trademark Registry. This is a very important and critical stage in the trademark registration procedure. After the trademark fulfils all the initial requirements i.e. the distinctiveness factor and has got an approval from the registry regarding its registrability, it is finally advertised in the Trademarks journal for inviting any third-party opposition. The main reason behind this is to give an opportunity to the common public to raise an opposition against the registration if they believe the trademark to be deceptively or phonetically similar to their owner other existing marks.
Who can file an opposition?
Any person may give a Notice of Opposition irrespective of the fact of his commercial or personal interest. The person need not be an owner of a prior registered trademark. He can be a customer, a purchaser or member of the public likely to use the goods. The question of bona fides of the opponent does not arise in case of filing an opposition. People are permitted to oppose the TM within a period of three months from the date of its publication in Trademark journal, which can then be extended to a maximum one more month.
What are the Grounds of Opposition?
A pending trademark application may be opposed on the following grounds:
- The mark is a generic term for the associated wares or services (in any language);
- The mark is primarily merely a surname;
- The mark is confusing with another trademark, official mark, an Olympic mark or a geographical indication registered in India;
- The trademark is prohibited under the Emblem and Names Act, 1950;
- The mark is scandalous, obscene or immoral;
- The mark is customary in the current language or in the established practices of business;
- The mark is contrary to the law or is prevented by law;
- The mark contains matters that are likely to hurt the religious feelings of any class or section of people;
- Another party had prior use of the mark or a confusingly similar mark in India;
- The applicant used the mark only as a licensee of another party;
- The mark is devoid of distinctive character;
- The mark is descriptive in nature;
- Application for the trademark is made with bad faith;
- The trademark is likely to deceive the public or cause confusion.
Essentials for filing an Opposition
The trademark opposition is filed through form TM-O. The concerned party that files the
opposition needs to submit required documents along with information of the application being opposed.
The required details and documents differ based on the ground of opposition. Let’s have a look over the ground of opposition and associated details.
If the opposition is based on the previously registered trademark, the opponent needs to mention the details of such TM with its status, application number and priority date.
If the opposition is based on already existing well-known marks or a mark having a reputation in the market, any document that can act as an evidence of such a mark and an indication of the country or countries in which the earlier mark is recognized to be well known should be mentioned. Alternatively, the proof that the mark is registered or applied for can be presented.
In situations where the opposition is filed by a licensee not being a registered user, the name of the licensee and his address and an indication that he has been authorized to enter the opposition may be given.
In situations where the opposing party is a foreigner, having no place of business in India, the name of the opponents and his address for service in India is required.
Creating and maintaining a brand is a big responsibility and huge funds may be invested. Hence, an application must pass through multiple checks and scrutiny before registration to prove their distinctiveness and validity.
Hence, Trademark opposition is the essential and critical stage in the registration process. It is one of the most effective remedies to protect your trademark and secure your brand. As the limitation period play a significant role in awarding the remedy. The registered proprietors/ prior users are required to be vigilant in securing their marks by initiating an appropriate proceeding at the right time.
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