Trademark Opposition: File or Defend with Counter-statement

What Is a Trademark Opposition?

When the Trade Marks Registry accepts an application, the mark is advertised in the Trade Marks Journal. For four months after the date of advertisement, any person can file a notice of opposition under Section 21 of the Trade Marks Act, 1999, stating why the mark should not be registered. The proceedings that follow are quasi-judicial. Both sides file pleadings and evidence and are heard by the Registrar, who then decides whether the mark proceeds to registration. A trademark opposition is different from a trademark objection. An objection is raised by the Registry's examiner during examination, while an opposition is raised by a third party after publication.

Opposition is a two-sided area. If a business finds that a confusingly similar mark has been advertised, it may need to oppose it to protect its own brand. If a business has itself been opposed, it must defend its application. Our trademark opposition service supports both.

Opposing Someone Else's Mark

You may want to oppose if a published mark is identical or deceptively similar to your registered or well-known mark, or to a mark that you have used and have goodwill in. The common grounds are:

• The mark is identical or deceptively similar to an earlier trademark for the same or similar goods or services, and is likely to confuse the public (Section 11).
• The mark is similar to a well-known mark and its use would take unfair advantage of, or harm, the reputation of that mark.
• Use of the mark would be prohibited by law of passing off or copyright, and is protected by the opponent's earlier use.
• The mark lacks distinctive character, is descriptive, deceptive or otherwise barred under Section 9.
• The application was made in bad faith, for example by a former distributor, agent or employee.

The opposition has to be filed within four months of the date of the Journal in which the mark was advertised, in Form TM-O with the prescribed fee. The period cannot be extended, so a watch on the Journal is important. If you miss the opposition window, the remedy of rectification or cancellation after registration remains, but it is generally more expensive and slower.

Defending Your Application Against an Opposition

If someone opposes your application, the Registry serves a copy of the notice of opposition on you. You have to file a counter-statement within two months of receiving it, or the application is treated as abandoned. The counter-statement responds to the opponent's grounds one by one and sets out why your mark should be registered. After that, the opponent files its evidence in support of the opposition, you file your evidence in support of the application, and the opponent may file evidence in reply. The matter is then listed for a hearing.

Stages of an Opposition

1. Notice of opposition: filed by the opponent in Form TM-O within four months of publication.
2. Counter-statement: filed by the applicant within two months of receiving the notice.
3. Evidence in support of the opposition: affidavits and documents filed by the opponent.
4. Evidence in support of the application: affidavits and documents filed by the applicant.
5. Evidence in reply: filed by the opponent, if needed.
6. Hearing: arguments before the Registrar, with written submissions in many cases.
7. Decision: the Registrar either allows the registration, refuses it or allows it with conditions. An appeal lies to the High Court within the time the law allows.

An opposition can take a year or more and often longer. Many oppositions end earlier by settlement, coexistence arrangements, limitation of goods or withdrawal. We keep the options of settlement in view throughout.

What Our Trademark Opposition Service Includes

• A review of the published mark or the notice of opposition, the grounds and the time limits.
• A strategy note on the strength of the case and the options: oppose, defend, negotiate or accept.
• Journal watch, so that you are alerted when a similar mark is advertised, where you ask for it.
• Drafting and filing of the notice of opposition, or of the counter-statement.
• Preparation of evidence: affidavits, documents proving use, reputation and priority.
• Preparation of settlement or coexistence terms, where the parties are open to it.
• Hearing preparation, written submissions and representation by a registered trade mark agent or advocate, where included.
• Advice on the order and on appeal.

How the Process Works

We start by checking the dates, since the four-month period for opposition and the two-month period for the counter-statement are strict. We assess the case and send you a short note. After you send the facts and documents, we prepare the notice or the counter-statement and file it. We then move through the evidence stages and track the hearing. At each stage, we advise whether it makes sense to continue or to explore a settlement. We keep you informed of costs as the matter progresses, since opposition proceedings can be long.

Important Considerations

• The Registrar decides on the evidence and the law, and the outcome cannot be guaranteed.
• Time limits are strict. A missed notice or counter-statement can end the case.
• Opposition proceedings involve sworn statements. The evidence has to be accurate and supported by documents.
• Oppositions often take a year or more, and sometimes longer, depending on the Registry's schedule and the conduct of the parties.
• Court proceedings for infringement or passing off, and appeals, are separate matters and are best handled by an advocate.