Trademark Opposition India

During the trademark registration process, trademarks can be opposed by the examiner, the public, or other third parties. The opposition occurs when the examiner raises concerns about the trademark application for various reasons. The opposition does not lead to rejection, but the registrar seeks further clarification and justification for the logo's validity. Third parties can also oppose the trademark in the public interest. There are two ways in which a third party or the public can object to the registration of a trademark:

1. When the trademark is published in the Trademark Journal.
2. If the applicant uses the mark before its registration.

Upon receiving a trademark opposition, the applicant must file a comprehensive opposition reply within one month or within the prescribed time period.

1Incorrect Form

If the applicant submits the wrong form for trademark registration, the examiner can raise opposition.

2. Incorrect Applicant Name

The examiner verifies the accuracy of the applicant's name, which must match the PAN details. Therefore, it is important to double-check the spelling of the name.

3. Use of Deceptive Words

Trademark names or logos that are misleading or contain deceptive terms that falsely describe the product will be rejected.

4. Offensive Terms

Trademarks must not include offensive terms, as they can lead to rejection of the trademark application.

5. Insufficient Information on Goods or Services

If the trademark application fails to provide sufficient and concise information about the goods or services, the examiner may reject the application on these grounds.

6. Identical Logo Already Registered

If the proposed trademark is identical or confusingly similar to a logo that is already registered, the examiner must provide justification for opposing the trademark.

When the opposition is raised, the status of a trademark in the Indian Trademark Registry changes to "Objected." Here are the steps involved in responding to a trademark objection:

Step 1: Analyzing the Trademark Opposition

Thoroughly analyze and understand the opposition to avoid mistakes in preparing the response documents.

Step 2: Drafting the Trademark Opposition Response

Draft a comprehensive response that includes the following:

1. Addressing the points raised in the opposition with legal principles and supporting references.
2. Providing supporting documents and evidence that validate the response.
3. Affirming the use of the trademark on the candidate's website, social media channels, promotional materials, and other platforms.
4. Highlighting the differences between the conflicting mark and the candidate's mark.
5. Submit the drafted response electronically using the Trademark e-filing gateway.

Step 3: Trademark Hearing

If the response is accepted, the application will proceed for registration and notification in the Trademark Journal. However, if further clarification is required or the answer is not accepted, a trademark hearing will be scheduled, and the applicant will be notified.

Step 4: Publication in the Trademark Journal

If the hearing outcome is favorable, the mark will be acknowledged, and a request will be made for publication in the Trademark Journal. A Refusal Order will be issued in case of a negative result, stating the reasons for the refusal. The applicant can file a review petition within 30 days to appeal the order.

Step 5: Registration

Once published in the Trademark Journal, the mark undergoes a four-month examination period. If no third-party oppositions are filed during this time, the mark proceeds toward registration, and a Registration Certificate is issued. If any opposition is raised, the opposition procedures will follow the prescribed rules of the law.