Trademark is undoubtedly one of the prime economical rights and its implication accelerates and materializes into the core issue when the competitor adopts similar or identical mark.
A trademark when it is registered is entered in the registry records which is a statutory requisite and is maintained with Indian Trade Marks Registry. The purity of the Register is of vital concern and it is for this reason that the Indian Trade Marks Act, 1999 has in place a three tire scrutiny procedure to ensure the purity of the register. The first scrutiny is conducted by the Trademark office sou moto wherein it searches the trademark data base and checks whether there are any other similar or identical marks and issues Office actions if any. The trademark registration procedure in India can move ahead only when the said office actions are overcome by filing appropriate response to the same and if the Registrar of Trade Marks is not satisfied with the said response, the Applicant is provided with another opportunity by way of hearing and consequently the Registrar decides thereupon.
If the Registrar of Trade Marks decides the application affirmately, which may be subject to conditions or not, the subject mark shall be advertised in the Indian Trade Marks Journal. By virtue of Section 21 of the Trade Marks Act, 1999 any person may initiate opposition proceedings against the subject mark, however the same should be initiated within the prescribed period of three months which is extendable by a period of one month on application from the date of the said advertisement in the Trade Marks Journal.
The third and final scrutiny for the purity of Registrar is by way of rectification proceedings which are initiated if the subject mark is already registered.
Procedure involved in Trademark Opposition in India
The Opposition proceedings are to be initiated before the concerned Registrar of Trade Marks. The jurisdiction for the proceeding is exclusively determined on the basis of the place of filing of the application for the trademark. As stated above any person is entitled to initiate opposition proceedings in India under the Trade Marks Act by filing Form 5 provided such person proves his interest in the subject mark to the satisfaction of the Registrar of Trade Marks. Upon receipt of the Notice of Opposition, the Registrar is required under the Act to serve a copy of the same to the Applicant and the Applicant within two months from the date or receipt of such Notice of Opposition is required to file the Counter Statement by way of Form 6. If the Counter Statement is not filed within the said stipulated period, he shall be deemed to have abandoned the subject application. If the Applicant files the Counter Statement, the Registrar is required to serve the copy of the Counter Statement on the opponent and he in turn has two months time extendable further for one month upon application to file the Evidence in Support of Opposition by way of Affidavit or write to the Registrar that he does not desire to file evidence but intends to rely on the facts stated in the Notice of Opposition. The Applicant too is provided with two months time for filing Evidence in Support of Application, if any. Additionally the Opponent is given one month time to file Evidence in Reply upon receipt of the Evidence in Support of Application. Upon completion of the formalities of evidences, the Registrar gives notice to the parties of the first date of hearing and within fourteen days of the receipt of the notice of hearing, The parties are required to notify the Registrar of their intention to appear in the matter and finally the matter is heard by the Registrar and is decided upon merits.
Grounds of Opposition:
The various grounds on which any person may initiate Opposition Proceedings are as follows:
The trademark applied for is:
Devoid of distinctive character
Descriptive in nature
Are customary in the current language and or in the established practices of trade
Likely to deceive public or cause confusion
Contains matters that are likely to hurt religious feelings of any class or section of the citizens of India
Prohibited under the Emblem and names (Prevention of Improper Use) Act, 1950
Exclusively of the shape of the goods
Identical with/similar to an earlier trademark
Malafide/bad faith
Prevented by virtue of the law of passing off
Contrary to any law for the time being in force
Prevented by way of Copyright Act, 1957
The grounds and forum for rectification/cancellation proceedings in India are also very same as that of the Opposition.
Apart from the above proceedings, invalidity proceedings can be initiated which is usually clubbed in infringement proceedings and the grounds for the invalidity proceedings are the same as that of the Opposition proceedings cited above. However the forum for invalidity proceedings is Intellectual Property Appellate Board (IPAB) and as per section 57 of the Trade Marks Act, 1999 the IPAB is empowered to invalidate the registration of a trademark partially.
The Opposition proceedings are the undisputable and effective remedy available to registered proprietor of the trademark and all that the registered proprietor is required to do is to be vigilant and initiate appropriate proceeding at the right time.
We, at PMG ASSOCIATES have a wealth of experience in protecting your valuable intellectual property rights in India and we are happy to provide advice and services. Please feel free to Contact Us for further information.
PMG ASSOCIATES
Advocates, Patent & Trademark Attorneys
EF7-10, Vasanth Nagar, Palarivattom
Cochin-682 025, INDIA
Tel:+91484 2337856 / 6457856
Fax :+91 484 2347893 / 2337057
E-Mail : info@pmgip.com