Filing and prosecution of trade mark opposition, is one of the most significant remedies available with the brand owner for protecting his or her trade mark. This is one of the earliest opportunity given to the public as a whole, including but not limited to an affected party whose trade mark rights may be hindered/ diluted, by an unscrupulous applicant who has made an attempt for registration of a similar or deceptively similar trade mark and sought statutory protection by hoodwinking the original prior registered/ unregistered trade mark owner as well as the office of the Registrar of Trade Marks.
An opposition can be filed by any person (Opponent), who may be from India or outside India, which is a kind of protest by the Opponent, opposing the application for registration of a trade mark. If a trade mark application which is violating the intellectual property rights of any person or entity is not opposed within the stipulated period of limitation, the same proceeds for registration. Once a trade mark is registered, it acquires a statutory recognition, and its subsequent cancellation becomes an onerous and cumbersome exercise in the juxtaposition of trade mark opposition. Once a trade marks gets registered, getting protection from the court of law also becomes complicated, because at times the courts may not be inclined to disturb a trade mark which has been registered by the Registrar of Trade Marks, who is considered to be a specialist authority in trade mark matters. In case, a person feels that the registration is likely to affect his intellectual property rights associated with his trade mark, it should always be preferred that opposition is properly filed within the period of limitation and prosecuted diligently. If, the opportunity of opposing a trade mark is lost, it is lost forever and the damage caused may be irreparable.
The basic intent behind publishing the trade mark in the Trade Marks Journal is to give notice to the public at large about the trade mark which is being proposed to be registered, to enable any interested party to oppose the registration.
It is important to note that registration of a trade mark can be opposed, only after the trade mark application is advertised in the Trade Marks Journal, which is a kind of official gazette. The Trade Marks Journal is published from time to time, normally on a weekly basis, and can be viewed by all from the official website of the Registrar of Trade Marks at http://www.ipindia.nic.in/journal-tm.htm .
For filing a notice of opposition, the period of limitation of 4 months from the date of the advertisement or re-advertisement of the trade mark in the Trade Marks Journal is extremely important, as this time is non-extendable for any reason, whatsoever. It is also important to adhere to all the strict timelines and limitation prescribed under the law, during the process of the prosecution of the trade mark opposition proceedings, as any lapse can lead to the abandoning of trade mark opposition by the Registrar of Trade Marks.
Once the opportunity of opposing a trade mark is missed, the only viable remedy left is to file a petition for cancellation of the trade mark before Intellectual Appellate Property Board (IPAB) or the Registrar of Trade Marks.
The grounds and reasons for opposing a trade mark will depend on the facts and circumstances of each and every case. However, some of the basic grounds for opposing a trade mark may be as under:
- The trade mark is similar or deceptively similar to the trade mark of the Opponent;
- The trade mark is similar or identical to the registered trade mark or pending trade mark of the Opponent, and is for similar or allied and cognate, goods or services;
- The trade mark is generic and descriptive in nature;
- The resemblance of the trade mark to the well-known trade mark of the Opponent.
- The Applicant has filed the trade mark application malafidely or with bad faith;
- The Applicant is not the actual owner of the trade mark; and
- The registration of trade mark is likely to deceive the public or cause confusion.
The notice of opposition has to be filed and contested at the appropriate office where the original application for trade mark registration has been filed by the Applicant. Presently, the office of the Registrar of Trade Marks has 5 branches which are located in Ahmedabad, Mumbai, Delhi, Kolkata, and Chennai.
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