Trademark Opposition in India

Trademark opposition is a legal process that allows any third party to challenge the registration of a trademark after it has been published in the official trademark journal. If someone believes that the new trademark is too similar to their own, could confuse consumers, or violate trademark laws, they can file an opposition to stop it from being registered.

Who Can Oppose a Trademark?

Anyone can oppose a trademark application if they believe it affects their rights or is invalid. This includes:

• Owners of similar registered trademarks.
• Businesses have been using a similar trademark for a long time (even if not registered).
• Anyone who believes the trademark is descriptive, misleading, or goes against trademark laws.

Why is Trademark Opposition Important?

Trademark opposition plays a key role in:

• Protecting existing trademark rights.
• Preventing consumer confusion in the market.
• Ensuring unique and valid trademarks are registered.
• Maintaining fair competition by blocking misleading or infringing marks.

This broad scope includes competitors, prior users, and even the general public if they believe the trademark registration is detrimental to their interests or violates legal/regulatory standards.

• Any person: This is a broad definition, encompassing individuals, companies, trusts, partnerships, and any legal entity.
• Prior users: If someone has been using a similar mark before the applicant, they can oppose the registration.
• Registered trademark owners: If the mark is similar to a registered trademark, the owner can oppose.
• Competitors: Businesses operating in the same or related fields can oppose if they believe the new mark is likely to confuse.
• General public: Even the public can oppose if they believe the mark is deceptive or harmful, although this is less common.
• Industry watchdogs: Organizations concerned with trademark protection may also oppose.

When to File a Trademark Opposition

• Within Four Months: The notice of opposition must be filed within four months from the date of publication of the trademark application in the Trademarks Journal.
• After Publication: Opposition can only be filed after the trademark application has been published in the journal.
• Once Published: It is crucial to monitor the Trademarks Journal for publications and act promptly if an opposition is warranted.

Here are some absolute and relative grounds for trademark opposition:

Absolute Grounds for Refusal under Section 9 of the Act

Section 9 of the Trade Marks Act, 1999 lists reasons to reject a trademark based on its nature. A trademark can be refused if it is not unique, is too descriptive, or goes against public policy or morals.

1. Lack of Distinctiveness

A trademark must be distinctive enough to differentiate the goods or services of one business from another.

Trademarks that are merely descriptive or generic are generally not registrable.

2. Descriptive Nature

Trademarks that simply describe the goods or services they represent (without any unique element) can be opposed.

For example, a trademark like "Chocolate Biscuits" for chocolate biscuits would likely be considered descriptive.

3. Bad Faith Applications

If a trademark application is filed to harm a competitor, usurp a well-known brand, or exploit another's goodwill, it can be opposed.

4. Legal Prohibitions

Trademarks that are prohibited by law, such as those that are offensive, scandalous, immoral, or contrary to public policy, can be opposed.

5. Likelihood of Confusion or Deception

If a trademark is likely to mislead consumers about the origin, nature, or quality of the goods or services, it can be opposed.

For example, a trademark that implies a geographical origin that the goods do not possess.

Relative Grounds for Refusal under Section 11 of the Act

Section 11 of the Trade Marks Act, 1999 deals with refusal based on existing trademarks. A trademark can be rejected if it's similar to an earlier mark and may confuse the public or harm someone else's rights.

1. Similarity to Existing Trademarks

A trademark may be refused if it is:

• Identical or confusingly similar to an already registered trademark.
• Used for similar goods or services.
• Likely to cause confusion among the public or create a false connection between the two marks.

This ensures that customers are not misled and protects the legal rights of the original trademark owner.

Example: If a company tries to register "Apple" for electronic products, it could be opposed under Section 11 due to its similarity with the well-known brand "Apple."

2. Likelihood of Confusion with Earlier Trademarks (Section 11(1))

This is the most common relative ground for refusal. A trademark will not be registered if:

• It is identical to an earlier trademark, and the goods or services covered by the new trademark are similar.
• It is similar to an earlier trademark, and the goods or services covered by the new trademark are identical or similar.

The crucial element here is the likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark. The Registrar assesses factors like:

• The similarity between the marks (visual, phonetic, conceptual).
• The similarity of the goods or services.
• The nature of the goods/services and the class of consumers.

3. Protection of Well-Known Trademarks (Section 11(2))

This subsection provides enhanced protection for well-known trademarks. A trademark will be refused registration if:

• It is identical to or similar to an earlier well-known trademark in India.
• It is to be registered for goods or services which are NOT similar to those for which the earlier well-known trademark is registered.

The refusal occurs if the use of the latter mark, without due cause, would:

• Take unfair advantage of the distinctive character or repute of the well-known trademark.
• Be detrimental to the distinctive character or repute of the well-known trademark.

This clause aims to prevent dilution and tarnishment of famous brands, even if the new mark is for different goods or services.

4. Prevention by Other Laws (Section 11(3))

A trademark will not be registered if its use in India is liable to be prevented by:

• The law of passing off: This protects unregistered trademarks used in the course of trade, preventing others from misrepresenting their goods or services as those of another.
• The law of copyright: If the trademark infringes on an existing copyright (e.g., a logo that is a copyrighted artistic work), its registration can be refused.

5. Consent of Earlier Trademark Proprietor (Section 11(4))

Notwithstanding the above, registration may be permitted if the proprietor of the earlier trademark or other earlier right consents to the registration. In such cases, the Registrar may register the mark under special circumstances.

To oppose a trademark, you'll need to file a Notice of Opposition (Form TM-O) with the Registrar of Trademarks, along with supporting documents and the required fee.

This notice should clearly state the grounds for opposition, details of the trademark application, and information about both the applicant and the opponent.

1. Notice of Opposition (Form TM-O): This is the primary document for initiating the opposition process.
2. Application Details: The notice must include the application number of the trademark being opposed.
3. Grounds for Opposition: Clearly state the reasons for opposing the trademark registration, such as similarity to an existing mark or lack of distinctiveness.
4. Applicant and Opponent Information: Provide details about both the applicant (the one seeking registration) and the opponent (the one opposing the application).
5. Evidence: Supporting documents to substantiate the grounds for opposition. This may include:

• • Affidavits: Statements made under oath to support the opposition.
  • Prior Use Evidence: Proof of prior use of a similar mark, such as sales invoices, product images, and advertising materials.
  • Government Registrations: If the opposition is based on a prior registration, provide a copy of the registration certificate.

6. Power of Attorney: If an attorney is representing the opponent, a Power of Attorney authorizes them to act on the opponent's behalf.
7. Fees: Pay the prescribed fee for filing the Notice of Opposition.
8. Counter Statement: The applicant will have an opportunity to file a counter-statement to the opposition.
9. Hearing Statements: If the opposition is contested, both parties may be required to submit hearing statements.
10. Adjournment Requests: If needed, parties can request adjournments of the hearing.

A Trademark Opposition (Form TM-O) must be filed within four months of the trademark's publication in the Trademarks Journal.

Filing can be done either online (e-filing) or offline, with online being preferred for convenience and potential cost savings.

1. E-filing (Online Filing):

• E-filing involves submitting the Notice of Opposition and required documents through the Indian Trademark Registry's online portal.
• This method often includes a fee discount compared to physical filing.
• E-filing is considered faster and more efficient.
• To e-file, one needs to register on the IP India portal and use a Class 3 Digital Signature Certificate (DSC).

2. Offline Filing (Physical Filing):

• Physical filing involves submitting the TM-O form and documents in person at the Trademarks Registry Office.
• The fee for offline filing is generally higher than for online filing.
• After manual filing, it may take some time to receive an acknowledgment receipt.
• Offline filing can be useful if online access or technical issues arise.

The process of trademark opposition is as follows:

1. Notice of Trademark Opposition

Any person can file for trademark opposition with the Registrar within 4 months from the date of advertisement of the registration application in the trademark journal by submitting a notice in Form TM-O and paying the prescribed fees.

The notice should contain the application (trademark registration application) details, the opposing party details, and the grounds of opposition. The Registrar should serve a copy of the notice of opposition to the applicant (the person who filed the trademark registration application).

2. Counterstatement for Notice of Trademark Opposition

The applicant must file their counterstatement to the notice of opposition with the Registrar in Form TM-O within 2 months of receiving a copy of the notice of opposition, stating their facts. The Registrar will serve a copy of the counterstatement to the opposing party.

If the applicant does not file the counter-statement within 2 months of receiving the notice of opposition, the Registrar will consider that the trademark registration application is abandoned and thus will not proceed to register the trademark.

3. Evidence For and Against Trademark Opposition

The opposing party shall provide evidence supporting their notice of opposition to the Registrar within 2 months of receiving a copy of the counterstatement filed by the applicant. The opposing party should also send all copies of the evidence to the applicant.

Upon receiving the evidence copy from the opposing party, the applicant should file their evidence in support of the trademark registration application within 2 months of receiving the opposing party’s evidence copy. The applicant must send their evidence to both the Registrar and the opposing party.

The opposing party can file further evidence within 1 month of receiving the copies of the application. The opposing party must submit further evidence to both the Registrar and the applicant.

4. Hearing and Decision Concerning Trademark Opposition

The Registrar, after the receipt of evidence from both parties and further evidence from the opposing party, will give notice to both parties of the first date of hearing. If the opposing party is not present on the hearing date, the opposition will be dismissed, and the Registrar will register the trademark.

If the applicant is not present on the hearing date, the registration application will be treated as abandoned and dismissed. The Registrar will consider the written arguments submitted by both parties to the proceeding.

After hearing both parties and considering the evidence submitted by them, the Registrar will decide whether to proceed with the trademark registration or reject the trademark registration application. The decision of the Registrar will be communicated to both parties in writing at the address provided by them.

In trademark opposition proceedings in India, specific forms are prescribed for various actions.

The primary form for initiating an opposition is Form TM-O, while Form TM-M is utilized for various ancillary requests that may arise during the opposition process.

Form TM-O

• Purpose: Used to formally oppose a trademark application published in the Trade Marks Journal.
• Filing: Must be filed within four months of the trademark's advertisement in the Journal.
• Contents: Includes the trademark application details, the opponent's details, and the grounds for opposition.
• Fee: Requires payment of a prescribed fee, which may vary based on the number of grounds cited.
• Key Sections: Used for opposition under Section 21(1), and can also be used for other rectification actions.

Form TM-M

• Purpose: Used for various post-registration or pre-registration requests related to trademarks, including some used in opposition proceedings.
• Filing: Can be used for different types of requests, such as applying for expedited processing, requesting extensions of time, or making other amendments to trademark applications or registrations.
• Contents: The form is divided into sections, with Part A for applicant and agent details and Part B for selecting the specific request and providing relevant details.
• Key Sections: Can be used for requesting rectification of the register.
• Multiple Requests: Only one request can be made per Form TM-M.

A trademark opposition proceeding involves official government fees, professional fees for an attorney, and other potential costs.

1. Official Government Fees

• Filing Notice of Opposition: ₹2,700 for one class of goods or services.
• Filing Counter Statement: ₹2,700 for one class of goods or services.
• Evidence (Affidavit): No official fee for filing evidence by way of affidavit.

2. Professional Fees for a Trademark Opposition Attorney

• Varying Costs: Attorneys' fees can range from ₹5,000 to ₹50,000 or more.
• Factors Affecting Cost: Complexity of the case, duration of the opposition, and the attorney's experience level.
• Example: One source suggests fees ranging from ₹5,000 to ₹15,000.

3. Other Costs to Be Aware Of

• Evidence Gathering: Expenses related to gathering evidence to support the opposition or defense.
• Expert Witnesses: Costs associated with hiring expert witnesses, if needed.
• Litigation: If the opposition proceeds to litigation, additional court fees and legal costs will be incurred.
• Opponent's Fees: If the opposition is successful, the applicant may be required to reimburse the opponent's costs.

To fight and win a trademark opposition, focus on building a strong case against the opposition, demonstrating your trademark's distinctiveness and right to registration, and effectively handling the legal process.

This involves gathering compelling evidence, filing a solid counterstatement, and potentially participating in a hearing.

1. Understanding the Opposition

• Review the Opposition Notice: Carefully examine the reasons for the opposition, identifying the specific claims and grounds being raised against your trademark application.
• Identify the Opponent: Understand who is opposing your trademark, their business, and their potential reasons for opposition.

2. Building Your Defense

• Gather Evidence: Compile evidence to support your trademark's distinctiveness and your right to registration. This may include:
  • Sales records and invoices.
  • Advertising and promotional materials.
  • Evidence of prior usage and commercial success.
  • Customer testimonials and feedback.
• File a Counterstatement: Respond to the opposition by filing a counterstatement that directly addresses the opponent's claims and presents your arguments and evidence.
• Prepare for a Potential Hearing: If the opposition proceeds to a hearing, be prepared to present your case before the Trademark Trial and Appeal Board (TTAB) or the relevant authority.

3. Handling the Process

• Seek Legal Counsel: Consult with a trademark attorney or professional for guidance throughout the opposition process, especially if the case is complex or the stakes are high.
• Consider Settlement: Explore potential settlement options with the opposing party, especially if it could lead to a faster and more cost-effective resolution.
• Appeal if Necessary: If the decision goes against you, consider appealing the decision to a higher authority.

After the Registrar decides on a trademark application, there are three main possibilities: the application is refused, the application proceeds to registration, or the decision is challenged.

1. Trademark Application is Refused

• Review Petition: The applicant can file a review petition with the Registrar within 30 days of the refusal notice.
• Appeal: If the review is denied or if the applicant chooses to bypass the review process, they can appeal to the IPAB or the High Court within three months of the refusal order.
• Grounds for Refusal: The Registrar must provide reasons for refusal, allowing the applicant to understand the objections and potentially address them in a review or appeal.

2. Trademark Proceeds to Registration

• Advertisement in Journal: If the application is accepted, it is advertised in the Trade Marks Journal to allow for public opposition.
• Opposition Period: A period is provided for third parties to oppose the registration.
• Registration: If no opposition is filed or the opposition is unsuccessful, the trademark proceeds to registration.

3. Challenging the Registrar's Decision

• Appeal to IPAB or High Court: If the applicant disagrees with the Registrar's decision, they can appeal to the IPAB or directly to the High Court.
• Time Limits: Appeals must be filed within specific timeframes (e.g., three months for the IPAB).
• Evidence and Arguments: The applicant will need to present evidence and arguments to support their case during the appeal process.

Understanding the differences between Trademark Objection, Opposition, and Rectification is crucial for anyone dealing with intellectual property in India.

Here's a table summarizing their key aspects:

Feature	Trademark Objection	Trademark Opposition	Trademark Rectification
Stage	During the examination phase of the application.	After the trademark application is accepted and published in the Trademark Journal.	After a trademark has been successfully registered.
Initiated By	The Trademark Examiner/Registrar.	Any third party (individual, company, trust, partnership firm) who believes their rights are affected.	The trademark owner (to correct errors) or any aggrieved third party.
Purpose	To address discrepancies, legal violations, or a lack of distinctiveness in the application.	To prevent the registration of a trademark that is similar to an existing one, lacks distinctiveness, or was filed in bad faith.	To correct errors, omissions, or make necessary changes to an already registered trademark, or to remove it from the register.
Grounds	- Lack of distinctiveness (descriptive, generic). - Similarity to existing trademarks/applications. - Incorrect application form or details. - Deceptive nature of the mark. - Prohibited symbols/emblems.	- Similarity to existing trademarks (registered or well-known). - Lack of distinctiveness. - Descriptive or generic nature. - Application filed in bad faith. - Contrary to law or public policy. - Likelihood of causing confusion or deception.	- Incorrect or inaccurate details in the register (e.g., spelling errors, wrong address, classification). - Wrongful registration (e.g., registered in bad faith, doesn't meet legal requirements). - Non-use of the trademark for a specified period (typically 3-5 years). - Fraud or misrepresentation in obtaining registration. - Contravention or failure to observe conditions related to the trademark.
Process	The examiner issues an Examination Report. Applicant files a reply with justifications and evidence. May involve a hearing.	The opponent files a Notice of Opposition (Form TM-O) within 4 months of publication. Applicant files a counter-statement. Both parties submit evidence. Hearing may be conducted.	Application filed with the Registrar (Form TM-16 by owner, TM-26 by aggrieved party, TM-M by Registrar). Involves submission of reasons and evidence. A hearing may be held.
Outcome	If successful, the objection is overcome, and the application proceeds to publication. If unsuccessful, the application may be abandoned/rejected.	If successful, the trademark registration is refused. If unsuccessful, the trademark proceeds to registration.	If successful, the register is corrected/amended, or the trademark is removed/cancelled.
Fees	No specific fee for filing a reply to an objection (though legal consultation fees may apply).	Prescribed fees are required for filing a Notice of Opposition and may apply to subsequent stages.	Prescribed fees are required for filing a rectification application.
Legal Basis	Primarily Sections 9 and 11 of the Trademarks Act, 1999.	Section 21 of the Trademarks Act, 1999.	Section 57 of the Trademarks Act, 1999.

India has witnessed several significant trademark opposition cases that have shaped its intellectual property jurisprudence. These cases often revolve around issues of deceptive similarity, well-known trademarks, trans-border reputation, and the broader interpretation of the Trademarks Act, 1999.

1. N.R. Dongre v. Whirlpool Corporation (1996): This Supreme Court case is a cornerstone for establishing the concept of "trans-border reputation" or "spill-over reputation" in India. Even though Whirlpool (a US-based company) did not have a registered trademark in India at the time, the Court recognized its well-known international reputation through advertising and global presence. This allowed Whirlpool to successfully oppose the registration of a similar mark by an Indian entity, preventing unfair advantage and confusion.
2. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001): This Supreme Court decision is vital for trademark opposition, especially in the pharmaceutical sector. It laid down a set of comprehensive factors to determine "deceptive similarity" between trademarks, emphasizing a stricter standard for medicinal products due to public health implications. The case involved the similar drug names "FALCITAB" and "FALCIGO," highlighting the need to avoid any potential confusion in this sensitive industry.
3. Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. (2018): This Supreme Court case reinforced the protection of "well-known trademarks." Toyota, the globally renowned car manufacturer, successfully opposed the use of its "PRIUS" mark by an Indian auto parts company. The Court acknowledged the global reputation of "PRIUS" and ruled that even if the goods were different, the use of a deceptively similar mark by another entity could lead to confusion and dilution of the well-known mark.
4. ITC Ltd. v. Central Park Estates Private Ltd. (2022) (Bukhara Case): In this case, the Delhi High Court declared ITC's "BUKHARA" mark, associated with its famous restaurant, as a "well-known trademark." This recognition provides a higher level of protection, allowing ITC to oppose the use of similar marks even across different classes of goods or services, based on the marks widespread reputation and goodwill.
5.  M/S. Nandhini Deluxe v M/S. Karnataka Cooperative Milk Producers Federation Ltd. (2018): This Supreme Court case provided clarity on situations where identical marks are used for different goods/services. It involved the trademark "NANDHINI" used by both a restaurant and a milk cooperative. The Court held that despite the identical name, the distinct nature of the goods and services meant there was no likelihood of confusion among consumers, thus allowing both to coexist. This case helps define the boundaries of trademark protection based on the similarity of goods/services.