How to Draft a Strong Counter-Statement in Trademark Opposition

If someone opposes your trademark, the most important step is to file a Counter-Statement (Form TM-O) within 2 months from the receipt of the Notice of Opposition. If you fail to do this, your trademark application is deemed abandoned.

Here’s a complete guide on what to do and how to draft a strong counter statement/affidavit:

1. Understand the Purpose

A counter-statement is your formal reply to the opposition filed against your trademark. Its purpose is to:

• Deny or refute the opponent’s claims.

• Justify your right to register and use the trademark.

• Present facts, prior use, and distinctiveness of your mark.

2. Steps to Take Immediately

1. Read the Opposition Carefully – Understand the grounds raised (similarity, prior use, lack of distinctiveness, bad faith, etc.).

2. Collect Documents – Invoices, advertisements, promotional materials, registration certificates (if any), domain registrations, or any proof of prior use.

3. Consult a Trademark Attorney – Professional drafting strengthens your case.

4. File Within Deadline – The 2-month period is non-extendable.

3. Structure of a Counter-Statement

(a) Heading and Title

• “Before the Registrar of Trade Marks, [Office Location]”

• In the matter of Trade Mark Application No. [XXXX] for the mark [Trademark].

• Counter-Statement to Notice of Opposition filed by [Opponent’s Name]

(b) Details of the Applicant

• Full name, address, nationality, and business details.

• Reference to the trademark application (number, class, filing date).

(c) Preliminary Submission

• State that the opposition is baseless, not maintainable, and filed in bad faith (if applicable).

(d) Para-wise Reply to Opposition

• Respond to each ground raised in the opposition, either:

  • Denied (if you completely disagree).

  • Admitted (only if factual and harmless).

  • Clarified (with explanation and justification).

• Example:
  “With reference to para 4 of the opposition, it is denied that the applicant’s mark is deceptively similar. The applicant’s mark is distinctive, visually and phonetically different, and has been honestly adopted.”

(e) Facts Supporting Your Case

• Mention date of adoption and first use of the mark.

• Provide details of continuous and bona fide use.

• State turnover figures, sales records, advertising expenses, and publicity efforts.

• Highlight distinctiveness and recognition among customers.

(f) Legal Grounds

• Assert that the trademark is registrable under Sections 9 and 11 of the Trade Marks Act.

• Emphasize that the mark does not cause confusion or deception.

• Mention that the opposition lacks evidence or legal merit.

(g) Prayer / Relief

Conclude with a clear request:
“It is therefore prayed that the opposition filed by [Opponent’s Name] be dismissed in its entirety, and the applicant’s trademark application be allowed to proceed to registration.”

(h) Verification

• Declare that the contents are true and correct to your knowledge.

• Signature, date, place, and attestation by Notary/Oath Commissioner.

4. Supporting Evidence (Later Stage)

After filing the counter-statement, you will be required to submit evidence in support of your application, including:

• Invoices, packaging, and labels.

• Advertisements, promotional material, website screenshots.

• Sales turnover and expenditure figures.

• Affidavit of evidence by the applicant or authorized representative.

5. Tips for Drafting a Strong Counter-Affidavit

1. File on Time – Missing the 2-month deadline will abandon your application.

2. Be Precise – Avoid generic denials; reply point-by-point.

3. Show Honest Adoption – Explain why and how you adopted the mark.

4. Prove Distinctiveness – Use evidence to show the mark has acquired recognition.

5. Highlight Differences – Stress visual, phonetic, and conceptual differences with the opponent’s mark.

6. Stay Professional – Keep the language formal, clear, and persuasive.

Conclusion

A counter-statement in trademark opposition is not just a defensive reply — it is your chance to prove ownership, establish goodwill, and secure registration. By responding point-by-point, backing your claims with evidence, and adhering to legal requirements, you can strongly defend your trademark against opposition.