Opposition
to the Trademarks
(Section 21 of the Trademarks Act,
1999 and Rules 47-57)
Section 20 of the Trademarks Act,
1999 provides that an application for registration of a trademark being
accepted by the Registrar either absolutely or subject to any condition or
limitation thereon, the Registrar shall advertise the same in the Journal of
the Trademarks.
After the publication of the trademark
in the journal any person aggrieved a apply to the Registrar of Trademark for
the opposition under section 21 of the Trademark Act,1999.
Procedure for the opposition:
Notice for Opposition (Rule 47
and 48)
As per Section 21(1) of the
Trademarks Act, 1999:
· Any person;
· Within four months from the date of
advertisement of application in Trademark journal. However, an extension of the
period under which the notice for the opposition to the Registrar may be given
under Section 21 can be taken by applying under Rule 47(6) in TM-44 alongwith a
fee of Rs. 500/-.
· Give notice in writing under TM-5 in
Triplicate alongwith fee of Rs. 2,500/- (Rule 47) for opposition to the
Registrar of Trademark
The Registrar of the Trademarks
under Section 21(2) shall serve a copy of the notice of opposition to the
applicant as soon as it received by the Registrar.
Counter Statement to the notice
of the Opposition (Rule 49)
The applicant shall within 2
months from the date of receipt of any Notice for Opposition may file the
counter-statement for the said notice to the Registrar. The Counter Statement
can be made in form TM-6 in Triplicate alongwith a fee of Rs. 1,000/- to the
Registrar. (in
case of non-submission the same shall be taken as abandoned)
Submission
of Evidence by the opponent to the Registrar (Rule 50):
The Opponent as per Rule 50 of
the Trademarks Rules:
· Within 2 months from the date of
service of counter statement or 1 month extension if approved by the Registrar
· May adduce evidence alongwith
affidavit in support of the opposition; or shall intimate to the Registrar and to
applicant in writing that that opponent does not desire to adduce any evidence
in support of his evidence but intends to reply upon facts stated in the notice
of opposition
After receiving the evidence the
applicant also get the opportunity to file evidence against the opponent in the
same manner as granted to the opponent.
The applicant as well as the
opponent may apply to the Registrar for the extension of 1 month as mentioned
above for adducing the evidence in Form TM-56 alongwith fee of Rs. 500/- within
two month from the date of the service of the notice or the service of the evidence
adduced by the Opponent or the Applicant or vice-versa.
Evidence in reply by opponent
The opponent within 1 month after
the date of receiving the copy of evidence from the applicant in his counter
statement may submit to the Registrar evidence with affidavit and shall deliver
the same to the Applicant.
Hearing by the Registrar
The Registrar within 3 months
from the date of completion of evidence may give notice to the parties of the
first date of hearing. Usually the date of hearing will be for a date atleast
one month after the date of first notice. If the parties have exhibits then the
copy of the same shall be produced with an affidavit before the Registrar of
Trademarks.
The Parties within 14 days from
the receipt of the notice of the hearing in Form TM-7 alongwith fee of Rs.
500/- shall intimate to the Registrar about the intention of attending the
hearing.
Effect of Non-appearance on the
date of hearing:
· If applicant is not present at the
date of hearing and has not intimated under TM-7 then the application shall be
abandoned until sufficient cause produced by Applicant under Rule 56(2).
· If opponent is not present at the date
of hearing and has not intimated under TM-7 then opposition shall stands
dismissed and TM will be registered.
Note: Specifically as per Rule
56(6) the fact that the agent or advocate on record of a party is engaged in
another court shall not be a ground for adjournment of the hearing.
The content above produced are subjected to change in laws
for the time being in force. The author shall not be liable for any damages of
whosoever caused to any person acting solely on the information provided here.
