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Trademark Opposition

Trademark Opposition

A trademark may be registered in India under the Trademarks Act, 1999. To register a trademark, the owner must submit an application to the Registrar of Trademarks (the “Registrar”). The Registrar will publish a trademark advertisement in the trademark journal following receipt of the registration application.  Anyone may submit an opposition to the trademark registration that has been published in the Trademark Journal. The trademark registration application is filed with the Registry of Trademarks, where the opposition is to be filed. The trademark registry will hold a hearing to reach a decision if it receives any opposition to the trademark. The trademark opposition process is outlined in the Trademark Act of 1999 and the Trade Marks Rules of 2017. After the registrar has accepted the trademark application on the basis of distinctiveness and published the third-party opposition’s trademark in the journal, trademark opposition in India occurs at a later stage.

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Grounds for Opposition

An opposition can be filed for several reasons, including:

Identical or Similar Marks:

If the proposed trademark is too similar to an existing registered mark or an earlier pending application

Prior Use:

If the opponent has been using the same or a similar mark for similar goods or services before the applicant.

Lack of Distinctive Character:

The mark lacks the unique character to distinguish the applicant's goods or services from others.

Bad Faith:

If the applicant's intention to register the mark is found to be in bad faith.

Public Deception:

If the mark is likely to deceive the public regarding the nature, quality, or origin of goods or services.

Key Considerations

Time Limits:

Adhering to the time limits for filing the opposition (4 months) and the counter statement (2 months) is crucial, as failure to do so can lead to the abandonment of the trademark application.

Professional Advice:

It is advisable to seek professional legal assistance for effective navigation of trademark opposition proceedings.

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