Trademark opposition is the phase that comes in after the trademark is published in the Trademark Journal. Post publication, the mark will be open for a period of 4 months, through which any third party can oppose the mark from being registered. In case of any opposition, further proceedings will be initiated, end of which the mark may or may not be registered based on the outcome of the proceedings.
Stage 1 – Filing Notice of Opposition In India
- Post advertisement for the mark in the trademark journal, any person can oppose the registration by filing Notice of Opposition along with the prescribed fees. The notice comes with reasons and grounds for opposing the mark.
- The Notice of Opposition thus received will be reviewed by the Registry and upon compliance with all norms; the same will be served to the trademark applicant.
Stage 2 – Filing Counter Statement
- Upon receiving the notice of trademark opposition in India, the trademark applicant must file a counter statement along with the prescribed fee within 2 months of statutory deadline.
- The counter statement needs to address and counter every claim made by the opponent. The counter statement should then be sent to the Registry for review. Upon complete compliance with the norms, the counter statement will be served to the opponent.
- This counter needs to be submitted within the span of 2 months. Failing to submit within the deadline can lead to an abandonment of the registration application.
Step 3 – Evidence From the Opponent
- After receiving the counter statement, the opponent must submit supporting evidence to strengthen his/her opposition. This will be done in the form of Affidavit and must be done within 2 months of receiving the counter statement.
- The opponent can also opt to waive filing an Affidavit and rely solely on the grounds made in the Notice of Trademark Opposition in India. In either case, the trademark registry must be informed about the same within 2 months else the opposition will be considered abandoned.
Step 4 – Evidence From Trademark Applicant
- Upon receiving evidence/intimation of waiver from the opponent, the applicant should further submit evidence in support of the trademark registration application. This has to be done in a span of 2 months.
- The applicant can also waive from submitting evidence and rely solely on the counter statement presented.
Step 5 – Further Evidence From Opponent
- As a reply to the evidence submitted by the applicant, the opponent can further submit evidence, if any. This provision is granted to bring in conclusion to the proceedings.
- This has to be done within one month of receiving evidence from the trademark registration applicant.
Stage 6 – Hearing Stage
- A hearing will be conducted between both the parties and based on the evidence submitted, the Registry would be deciding on whether to register the trademark or not.
- In case of any obstacles to attend the hearing, a request for an adjournment can be raised by the party. However, this must be done at least 3 days prior to the hearing date. The maximum number of adjournment is restricted to 2 and the duration between each is restricted to not more than 30 days.
Further, if any of the party fails to show up to the hearing, the Registrar can rule the case against his favor.