Trademark Opposition

Trademark Opposition in India

Safeguard Your Brand. Challenge Unfair Registrations.

Once a trademark application is accepted by the Registrar, it is published in the Trademark Journal for a four-month opposition window. During this time, any person—including a competitor, consumer, or member of the public—may raise an objection against the registration if they believe the trademark infringes on existing rights or violates legal provisions.

At Consult Your Counsel, we assist both trademark owners and objectors in navigating the opposition process under Indian law, ensuring procedural compliance, strategic advice, and effective representation.

What Is Trademark Opposition?

Trademark opposition is a legal remedy provided under the Trade Marks Act, 1999 and Trade Marks Rules, 2017, allowing interested parties to challenge a trademark before it is officially registered.

Once published in the journal, any individual or entity can file an opposition using Form TM-O within four months from the date of publication. The Registrar then initiates proceedings to determine whether the trademark should proceed to registration or be rejected.

Who Can Oppose a Trademark?

As per Section 21 of the Act, any person can file an opposition—regardless of whether they hold a registered trademark or a commercial interest. This includes:

• Existing trademark holders
• Competitors in the same industry
• Members of the public or trade associations
• Consumers or businesses likely to be affected

Grounds for Filing an Opposition

While the Act doesn’t list exhaustive grounds, typical reasons for opposing a trademark include:

• The mark is identical or deceptively similar to an existing trademark
• The mark lacks distinctive character
• It is descriptive of the goods/services
• It was applied for in bad faith
• It is a common term in trade or industry
• It may mislead or confuse the public
• It violates legal or statutory provisions
• It is prohibited under the Emblems and Names Act, 1950
• It offends religious sentiments or public morality

Trademark Opposition Procedure in India

Here’s a step-by-step overview of the process:

1. Filing the Opposition (Form TM-O)

The opposition must be filed within four months of publication in the journal. The notice must contain:

• Details of the opposing party
• Application number and trademark details
• Specific grounds for opposition

The Registrar serves a copy to the applicant within three months of receiving it.

2. Filing the Counterstatement

The applicant has two months from the date of receiving the opposition to file a counterstatement using Form TM-O.

• Failure to respond results in abandonment of the application.
• The counterstatement is shared with the opponent.

3. Evidence Stage

• Opponent’s Evidence: To be submitted within two months of the counterstatement.
• Applicant’s Evidence: Filed within the next two months.
• Rebuttal Evidence (Optional): Opponent may file within one month of receiving the applicant’s evidence.

Each set of documents must be shared with both the Registrar and the other party.

4. Hearing & Final Decision

The Registrar schedules a hearing for both parties to present arguments. Based on the submissions and hearing, the Registrar decides:

• If the opposition succeeds, the application is rejected.
• If the opposition fails, the trademark proceeds to registration and a certificate is issued.

Importance of Timely Action

Missing deadlines or failing to submit required documents can have serious consequences:

• Applicant: Delay or inaction can result in rejection of the trademark application.
• Opponent: Failure to pursue the case diligently may lead to dismissal of the opposition.

Strict compliance with procedures and timelines is essential for protecting your rights.

Why Trademark Opposition Matters

Trademark opposition serves as a crucial checkpoint in the trademark registration process. It:

• Prevents misleading or conflicting marks from entering the market
• Protects the rights of existing brand owners
• Ensures public interest and legal compliance
• Promotes fair business practices

“Defend Your Brand. Oppose Infringement With Consult Your Counsel.”