Notice of Opposition in Trademark Law

A Notice of Opposition is the formal document filed to challenge the registration of a trademark after it has been published in the Trademark Journal but before it is officially registered. This process allows third parties to prevent the registration of marks that may be identical, deceptively similar, or otherwise unlawful.

It is governed by Section 21 of the Trade Marks Act, 1999 and the Trade Marks Rules, 2017.

1. When Can You File a Notice of Opposition?

• A trademark application, once accepted by the Registrar, is advertised in the Trademark Journal.

• Any third party can file a Notice of Opposition within 4 months of the publication date.

• Oppositions can be filed against all or part of the goods/services listed in the application.

2. Who Can File an Opposition?

• Registered trademark owners who own an identical or similar mark.

• Businesses or individuals using an unregistered but prior trademark.

• Any interested person who believes the mark is unlawful or misleading (for example, consumer groups).

3. Grounds for Opposition

Some common legal grounds include:

1. Similarity with Existing Mark – The mark is identical or deceptively similar to an existing registered or pending trademark.

2. Likelihood of Confusion – Use of the mark will confuse or deceive the public.

3. Lack of Distinctiveness – The mark is generic, descriptive, or non-distinctive.

4. Prohibited Marks – The mark is offensive, contrary to law, or prohibited under Sections 9 and 11 of the Trade Marks Act.

5. Bad Faith – The application was filed dishonestly, intending to misuse goodwill.

6. Well-Known Marks – The mark takes unfair advantage of a well-known trademark.

4. How to Draft a Notice of Opposition

A strong opposition must include:

(a) Heading and Title

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

• In the matter of Trade Mark Application No. [XXXX] in Class [XX].

• Notice of Opposition

(b) Details of the Opponent

• Name, address, nationality, and business details.

• Registration details of their trademark (if applicable).

(c) Details of the Applicant

• Name and address of the applicant.

• Trademark applied for, with application number and class.

(d) Grounds of Opposition (Core Section)

• Similarity with opponent’s mark.

• Likelihood of confusion.

• Prior use and goodwill.

• Violation of Sections 9 and 11.

• Any other relevant facts.

(e) Supporting Facts and Evidence

• Sales turnover figures, advertising expenditure, invoices, registrations, promotional materials, etc.

(f) Relief / Prayer

• A clear statement requesting rejection of the application.

(g) Verification

• A declaration that the facts stated are true.

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

5. How to File a Notice of Opposition

(a) Form and Fees

• File Form TM-O (for opposition or counter-statement).

• Government fee:

  • ₹3,000 (physical filing)

  • ₹2,700 (e-filing)

(b) Where to File

• At the appropriate Trademark Registry Office depending on the applicant’s jurisdiction.

• Can be filed online via the IP India website or physically.

(c) Documents Required

1. Notice of Opposition (drafted and signed).

2. Power of Attorney (if filed through an attorney).

3. Evidence documents (invoices, ads, registration certificates, etc.).

4. Government fee receipt.

6. What Happens After Filing Opposition?

1. Counter-Statement:

   • The applicant must file a counter-statement within 2 months.

   • If not filed, the application is deemed abandoned.

2. Evidence Stage:

   • The opponent files evidence in support.

   • The applicant files evidence in reply.

   • The opponent may then file additional evidence in rejoinder.

3. Hearing:

   • The Registrar fixes a date of hearing.

   • Both parties argue their case.

4. Decision:

   • The Registrar either accepts the opposition (application rejected) or dismisses it (application proceeds to registration).

5. Appeal:

   • The aggrieved party can appeal before the High Court.

7. Tips for a Strong Opposition

• Be specific – avoid vague statements; give dates, facts, and evidence.

• Cite legal provisions – especially Sections 9, 11, and 18 of the Act.

• Attach supporting documents – invoices, advertisements, and prior registrations.

• Demonstrate goodwill – show market presence, customer recognition, and long use.

• Use professional drafting – errors in pleadings can weaken the case.

Conclusion

A Notice of Opposition is a powerful legal remedy to protect your brand identity from conflicting or dishonest trademarks. Drafting should be precise, evidence-backed, and legally strong. Filing must be done within the strict 4-month deadline, either online or at the Trademark Registry. With proper opposition, businesses can safeguard their trademarks and prevent dilution of their brand value.