Trademark Opposition in India: How to Oppose a Mark or Defend Your Application

Once the Trade Marks Registry accepts an application, the mark is advertised in the Trade Marks Journal. This gives anyone who thinks the mark shouldn't be registered a chance to oppose it. Opposition is how brand owners stop confusingly similar marks before they're registered, and it's also a stage every applicant needs to be ready for. This guide explains how it works from both sides.

The Four-month Window

A notice of opposition can be filed within four months from the date the mark is advertised in the Journal. The deadline is strict, so brand owners who want to protect their marks should watch the Journal regularly, or use a watch service, to catch conflicting marks in time.

If no one opposes within four months, the mark proceeds to registration.

Who Can Oppose, and on What Grounds

Any person can oppose, not only the owner of an earlier mark. Common grounds include:

• The mark is identical or similar to an earlier mark for similar goods or services, and likely to cause confusion.
• The mark is descriptive, lacks distinctiveness, or is otherwise barred under the absolute grounds.
• The application was made in bad faith, for example by copying a known brand.
• The applicant isn't the true owner of the mark.
• The mark takes unfair advantage of, or harms, a well-known mark.

The Stages

1. Notice of opposition

The opponent files a notice of opposition on the trademark portal, setting out the grounds, and the Registry sends a copy to the applicant.

2. Counter-statement

The applicant must file a counter-statement within two months of receiving the notice. This is critical: if the applicant doesn't file it in time, the application is treated as abandoned.

3. Evidence

Both sides file evidence in support of their case, usually as affidavits with supporting documents, such as proof of use, sales, advertising and earlier registrations. The opponent files first, then the applicant, and the opponent can file evidence in reply.

4. Hearing

The Registrar hears both sides, usually online, and decides whether the mark should be registered. The decision can be appealed within the time allowed.

Oppositions can take a long time, often more than a year, though many are settled along the way.

Defending Your Application

• File the counter-statement on time, responding to every ground raised.
• Gather evidence of your adoption and use of the mark, including the date of first use, invoices, advertising and online presence.
• Show the differences between the marks and between the goods or services.
• Consider whether a settlement makes sense, such as limiting the goods or services, changing the mark slightly, or agreeing a coexistence arrangement.

Opposing Someone Else's Mark

• Monitor the Journal for marks similar to yours.
• File the notice within four months, with clear grounds.
• Keep evidence of your earlier use and reputation ready.
• Weigh the cost of opposition against the risk of the mark being registered.

After Registration: Rectification

If a conflicting mark has already been registered, opposition is no longer possible, but you may be able to apply to have it removed or rectified, for example because it was wrongly registered or hasn't been used for a long period. This is a separate process with its own grounds.

Common Mistakes

• Missing the four-month opposition window.
• Applicants not filing the counter-statement within two months.
• Thin evidence of use or reputation.
• Not exploring settlement when the marks can coexist.

Getting Help

Think Filing watches the Trade Marks Journal for conflicting marks, files and defends oppositions, and handles rectification where needed.

Sources

• Trade Marks Act, 1999.
• Trade Marks Rules, 2017.