Procedure for Opposition to Trademarks

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.

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