Trademark Opposition Guide

This article is written by Sowbhagyalaxmi S. Hegde. It provides a detailed look at the process of trademark opposition, covering everything from the filing to the hearing. We will also explore the legal grounds for opposing a trademark under the Trade Marks Act of 1999. By following a structured approach, we can understand each part of the opposition process, including the roles of each party, their responsibilities, and the possible outcomes.

Understanding Trademark Opposition

In simple terms, a trademark is a sign, logo, or expression that distinguishes goods or services. Trademarks are essential for protecting a brand and giving consumers confidence in their choice. In today’s competitive market, trademarks help establish a brand while safeguarding its intellectual rights. For instance, recognizable brands like TATA Steel and Chrome cultivate trust and loyalty among their consumers.

To ensure that trademarks are protected from infringement, there’s a legal process called “trademark opposition.” This occurs during the trademark application stage, specifically when an applied trademark is published for opposition in the official trademark journal. The trademark opposition process is crucial to stopping the registration of trademarks that might violate existing rights, confuse consumers, or go against public policy. This means that third parties can object to a trademark, allowing for a protective measure that ensures only valid trademarks are registered.

Who Can Oppose a Trademark?

The Trade Marks Act of 1999 outlines the procedures for registering trademarks in India. According to the Trade Marks Rules of 2017, brands apply for trademark registration using a specific form called Form TM-A. Once an application is received, it is published in the Trademark Journal. Under Section 21 of the Trade Marks Act, anyone with a similar brand name—including individuals, companies, trusts, and partnerships—can oppose the application. This opposition must be filed with the Trademark Registrar within four months of the trademark’s publication. The formal submission for opposition is done through Form TM-O.

Grounds for Trademark Opposition

Absolute Grounds for Refusal

Section 9 of the Trade Marks Act of 1999 lays out absolute grounds for refusing trademark registration. These include:

1. Trademarks lacking distinctive character;
2. Trademarks that describe characteristics like type, quality, or geographical origin;
3. Trademarks consisting of common signs or indications;
4. Trademarks that may confuse the public;
5. Trademarks that could offend religious sentiments;
6. Scandalous or obscene trademarks;
7. Trademarks prohibited by the Emblems and Names (Prevention of Improper Use) Act, 1950.

Relative Grounds for Refusal

Section 11 of the Trade Marks Act provides relative grounds for refusal, which means opposition can be based on:

1. Similarity to an earlier trademark leading to public confusion or association;
2. Similarity to an earlier mark when the goods or services are similar;
3. Similarity to a well-known trademark that might harm its reputation;
4. Inappropriate use of a well-known trademark in differing goods or services;
5. Need for consent from the previous mark owner.

Trademark Opposition Proceedings

In India, the trademark registration process includes the option for third parties to challenge an application. This is legally backed by Section 21 of the Trade Marks Act of 1999. The process for filing a trademark opposition, including required steps, is as follows:

Notice of Opposition

According to Section 21(1) of the Trade Marks Act:

1. A notice must be filed within four months of the trademark’s publication in the journal using Form TM-O;
2. Accompanying the notice should be a fee between Rs. 2,000 to Rs. 9,000 based on the number of grounds for opposition;
3. The form must detail the application, the opposing party, and the reasons for the opposition.

Counter Statement

Sections 21(2) and (3) provide that once the notice of opposition is filed, the Registrar must send a copy to the applicant within three months. The applicant has two months to file a counter statement using Form TM-O, addressing the grounds for their application. If a counter statement is not filed, the application may be considered abandoned.

Evidence

Once the counter statement is received, as per Section 21(4), the Registrar sends it to the opponent within two months. The opponent can then present evidence supporting their claims. Both parties have the chance to submit affidavits to support their arguments.

Hearing

Section 21(5) states that after evidence is exchanged, a hearing will take place before a hearing officer, who will conclude the matter based on the presented information.

Security for Costs

Section 21(6) allows the Registrar to require security for costs from parties residing outside India or those who do not have a business presence in the country. Failure to provide this security may result in abandonment of the opposition or application.

Correction of Errors

As per Section 21(7), the Registrar can allow corrections to errors made in the notice of opposition or counterstatement, but only upon a formal request from the parties involved.

Filing of a Notice of Opposition

A notice of trademark opposition must include:

1. The application number for the trademark being opposed;
2. The name of the trademark applicant;
3. A list of goods/services related to the trademark application;
4. Details of the opposing party, if applicable;
5. Address for service in India if the opponent has no local presence;
6. A statement regarding the earlier trademark if applicable;
7. Information on the earlier trademark’s registration status, application number, and the date it was filed;
8. Clear grounds for the opposition.

After the notice is submitted, the Registrar will review it and send a copy to the trademark applicant, who then must respond with a counter statement within two months.

Filing a Counter Statement

The counter statement is a formal document filed in response to the notice of opposition. It is crucial for the applicant to address the opponent’s claims either by denying or admitting them while presenting supporting evidence for their application. Filing this counter statement is critical; neglecting to do so can result in application abandonment.

Evidence Affidavit Under Rule 45

Under Rule 45 of the Trade Mark Rules 2017, the opponent must submit their supporting evidence through an affidavit within two months of receiving the counter statement from the applicant. This affidavit must layout the facts supporting the opposition and should include the deponent’s particulars and address.

If the opponent chooses not to file an affidavit, they must notify the Registrar and the applicant in writing, or they may abandon their opposition. Extending the time to file the evidence is an option, provided the request is made before the deadline.

Evidence Affidavit Under Rule 46

Similarly, Rule 46 allows the applicant to file their evidence affidavit within two months of receiving evidence from the opponent. They can also rely on previously submitted documents.

Filing and Serving Evidence

• Timeframe: The applicant must submit their evidence within two months but can request a one-month extension.
• Format of Evidence: This usually includes a specimen showing how the trademark might cause confusion.
• Waiver Option: The applicant can choose to forgo submitting new evidence and rely solely on their counter statement, informing the Registrar and opponent accordingly.
• Serving Evidence: The applicant is responsible for delivering a copy of their evidence affidavit to the opponent.
• Failure: Not filing evidence within the set timeline can lead to the application being deemed abandoned.

Evidence in Support of Opposition Under Rule 47

Under Rule 47, the opponent may file a reply to the applicant’s evidence submitted under Rule 46 within one month. This reply is optional; if not submitted, the case will still proceed to a hearing.

Failing to reply may result in the acceptance of the applicant’s claims as admitted and not open for dispute during the hearing.

Conduct of the Hearing

Once the evidence submission phase concludes, the Registrar will schedule a hearing. Both parties will receive a notification about the date. Requests for hearing adjournments can be made, but must be justified and submitted at least three days in advance along with a fee. Only two adjournments are allowed, each not exceeding 30 days.

If neither party appears for the hearing, the Registrar may proceed in favor of the present party. If both parties are present, they will be allowed to present their evidence, leading to a final decision regarding the trademark registration.

Benefits of Trademark Opposition

Utilizing trademark opposition is vital for businesses to maintain integrity and ensure a competitive market. Here are some key benefits:

1. Brand Protection: It prevents registration of similar marks, preserving brand identity.
2. Consumer Clarity: It helps minimize public confusion, enhancing trust in brands.
3. Deterrent Against Infringement: This process acts as a barrier to potential violators.
4. Legal Clarity: Successful oppositions create clear legal precedents.
5. Cost Efficiency: It can be more economical than extensive litigation.
6. Reputation Management: Opposing harmful trademarks helps maintain a brand’s good standing.
7. Encouragement of Fair Competition: Trademark oppositions foster a fair competitive landscape.

Judicial Precedents and Guidelines on Trademark Opposition

M/S Nandhini Deluxe v. M/S Karnataka Co-Operative Milk Producers Federation Ltd.

Case Overview

This case revolved around the trademark “Nandhini.” Nandhini Deluxe, a restaurant chain, sought to register the name for its food products, while the Karnataka Co-Operative Milk Producers Federation Ltd. opposed this due to their prior use of the same term for milk products.

Key Issues

1. Is “Nandhini” misleadingly similar to the respondent’s trademark?
2. Does it create confusion among consumers?

Ruling

The Supreme Court of India determined that the term “Nandhini” was widely recognized regarding the milk products, and its use by Nandhini Deluxe would cause confusion. The court ruled in favor of the respondent, denying the registration.

M/S. ITC Limited v. Nestle India Limited (2020)

Case Overview

In this situation, ITC Limited claimed that Nestle’s “Magical Masala” for their Maggi Noodles infringed on the trademark “Magic Masala” used for ITC’s Sunfeast Yippee Noodles. Both parties argued various aspects of the names.

Key Issues

1. Is “Magical Masala” misrepresenting ITC’s trademark?
2. Has “Magical Masala” gained a distinct identity?
3. Should “Magic Masala” be protected as a trademark, or is it merely descriptive?

Ruling

The Madras High Court found Nestle’s use of “Magical Masala” acceptable, noting it as descriptive rather than a trademark violation, highlighting that the branding difference was clear.

Trademark Opposition Board

The Trademark Opposition Board (TOB) oversees trademark opposition proceedings, allowing third parties to challenge trademarks they feel might infringe on their rights or confuse consumers.

Overview of Trademark Opposition Boards Globally

India

In India, the Trademark Opposition process follows the Trademarks Act of 1999 and is supervised by the Trade Marks Registry, which fulfills the role of the Trademark Opposition Board.

• Structure: The Registrar oversees the process, allowing both parties to present their evidence before making a ruling.
• Appeals: Decisions can be appealed to the Intellectual Property Appellate Board.

United States

In the U.S., the Trademark Trial and Appeal Board (TTAB) within the USPTO handles opposition and cancellation proceedings.

• Structure: TTAB processes include a series of steps from filing opposition to hearings.
• Appeals: TTAB decisions can be challenged in federal courts.

United Kingdom

The UK operates with an Intellectual Property Office (IPO), which manages opposition proceedings.

• Structure: The IPO oversees opposition filings post-publication in their official journal.
• Appeals: Appeals can be made to a higher authority within the IPO or to the High Court.

Canada

In Canada, the Canadian Intellectual Property Office (CIPO) handles the trademark opposition board.

• Structure: This board manages oppositions through a structured process including submissions and hearings.
• Appeals: Their rulings can be appealed to Federal Court.

Difference Between Trademark Objection and Trademark Opposition

Conclusion

Trademark opposition plays a crucial role in ensuring clarity in the marketplace. It acts as an essential stage in protecting a trademark during registration. For a business, safeguarding its trademark is paramount, accomplished through the opposition procedure. Oppositions prevent consumer confusion and uphold rights for distinct trademarks. The process outlines specific timelines for submitting notices, counterstatements, and evidence, ensuring all parties have a fair opportunity to present their case. This ultimately reinforces clarity and fairness, protecting businesses from unfair competition.

Frequently Asked Questions (FAQs)

Can the decision of the Registrar be appealed?

Yes, the Registrar’s decision can be appealed to the Intellectual Property Appellate Board if there is disagreement with the judgment.

What if opposition is not filed within the specified time?

If the opposition is not submitted within four months, the trademark application will move forward for registration.

Is there any fee for filing a trademark opposition?

Yes, fees apply and vary based on the number of grounds cited, ranging from Rs. 2,000 to Rs. 9,000.

What does a Registrar do in the trademark opposition process?

The Registrar reviews the process, assesses evidence from both parties, conducts hearings, and ultimately makes a decision regarding the trademark registration.