Dealing with Trademark Application Opposition

One of the most important things you can do to protect your brand identity is to obtain a trademark. But, if a third party files any opposition against your trademark application after you have filed it with the Indian Trademark Registry. So if someone ends up opposing your trademark, this is not the end of the world. We have ways to respond to protect your mark, and to move forward with registration.

Indian Trademark Law: Responding to The Opposition Process – Your Guide

Trademark opposition defined

The process by which a third party can object to registration of your mark is called a trademark opposition. This usually happens after the Trademark Registrar has accepted your application and published it for opposition in the Trademark Journal. If a person or group believes that your mark is similar to theirs, they can file an opposition to your mark within four months from the time it is published.

A Few Reasons to Object to a Trademark

There are a few common reasons oppositions are filed:

• Likelihood of Confusion: The mark is the same or similar to a registered or pending trademark.
• Descriptive or Generic Terms – If the mark consists of generic terms or describes the goods/services in question.
• No Distinctiveness – If the mark does not provide a unique identification.
• Registration for the Wrong Reason – if the applicant is believed to be associated with the trademark in bad faith.
• Deceptive, Immoral, or Scandalous – If the strength of trademark consists of offensive, false, or prohibited matter.
• Conflict with Well-Known Mark – If the mark conflicts with a well-known mark in India.

What to Do When Someone Opposes Your Trademark

How to Defend Your Application If Your Trademark Gets Opposed

• Receiving and Analysing the Notice of Opposition

When an opposition filed, a copy of the Notice of Opposition is sent to you by the Trademark Registrar. A form listing the opponent and their reasons for objection could Thank Analyse the accusations closely so that you can formulate a good rebuttal.

• Counterstatement (Within 2 Month)

Within 2 months of receiving the notice of opposition, you are required to file a Counterstatement. This document should:

• Present arguments against the opposition claims.
• Give valid grounds for your trademark Files.
• Provide proof of prior use (if applicable).

If you do not respond by that deadline, your application is abandoned.

• Presentation of Evidence by Each Side

After which, the two parties should provide evidence supporting their respective points:

• Evidence by opponent — third party provides documents to show its case (i.e. trademark certificates by them, books of account, advertisements, invoices, etc.)
• Opposer grounds – You need slay their arguments with proof of your mark (e.g., how you use it, popularity to buy or sell goods, advertising, etc.)

• Trademark Hearing

The Registrar may, if it is necessary to do so, direct both of the parties to appear before him for the purpose of presenting evidence regarding the application before him. Having a trademark attorney represent you at this point is recommended as they will bolster your arguments.

• Registrar’s Decision

The Trademark Registrar evaluates the arguments and evidence and makes a decision on whether to grant or refuse the registration.

In the case of a successful victory, your trademark moves on to the registration stage, and you receive the Trademark Certificate.

The only way your application can be denied is if the opponent wins. Change the mark or appeal against the decision.

What Happens If Your Trademark Application Is Refused?

Should the opposition be successful and your application is refused then you can:

• Appeal to the IPAB: (Intellectual Property Appellate Board) You can appeal against the Registrar if you feel that the decision has gone against you(sic).
• Turn to the Adversary to Work Out an Arrangement – If the adversary is a commercial competitor, perhaps the parties can settle the end without needing to finish up in court.
• Modify and Resubmit – If the opposition was grounded on similarity, you have the chance of modifying your trademark, therefore increasing the chances of its approval.

How to Avoid Trademark Opposition

• Although there are always going to be cases of opposition, following these steps can help your chances of not facing the heat:
• Full Trademark Search – Make sure your mark does not clash with existing trademarks prior to applying. Choose a unique and distinctive trademark: steer clear of generic or descriptive terms that may be subject to opposition.
• File Within the Proper Class – Make sure your application is filed in the proper Trademark Class.
• Consistent Use Of The Trademark — Using the trademark strengthens your argument as a way to counter any claims by your competitors opposing registration.
• Secure Your Mark Before Others Do– the sooner you register your trademark the better, as the longer you wait, the more likely someone else will file a competing mark before you.

Conclusion

Opposition does not equate to losing trademark rights. But if you know the process, have good evidence, and take the right legal steps, you can effectively defend your trademark. Enlisting skilled legal assistance can also help you clear the various hurdles posed by the opposition.

To handle trademark opposition with professional help and to secure your brand, visit Kaagzaat.org. With our one-stop solution adding value to your business identity, our expert will assist you in hassle-free registration of a trademark.