Trademark Attorneys at Singhwal have hands on experience in Trademark Opposition Filing. We also specialize in filing responses namely counter-statement against opposition proceedings instituted with respect to a trademark during the prosecution of the same. Imitation may be the sincerest form of flattery. However, the same may be harmful to the brand owner or an Trademark owner as the same dilutes the rights in one’s marks. Popularity most definitely brings up copy-cats, who not only start eating up your revenue, but also substantially tarnish your reputation. To counter such copy-cats, trademark laws extends an enforcement mechanism of Trademark Opposition before the registration stage during prosecution allowing any interested party to file for an opposition with the Trademarks Registry. We at Singhwal specialize in enforcement of our client’s Trademark rights by filing Trademark Opposition against an application, as well as protect them from any filings which are based on a malafide intention by filing the counter statement to Opposition proceeding against our client.
Trademark Opposition Filing
We cater to both the services of Filing the Opposition against a Pending Application as well as Filing a Response to an Opposition Proceeding which involves the counter statement. We have proficient and highly skilled attorneys who take care of opposition proceedings and have a vast experience in hearing proceedings before the Controller. We conduct Trademark Watch by searching registers across jurisdiction to find out whether any application is filed which amounts to damage our client.
This Trademark watch service is conducted by expert and skilled analytics team of trademark attorneys to cater to our clients in enforcing their rights by filing opposition, which helps in preventing the grant of a Trademark application in pendency, through an administrative proceeding before Trademark examiner. The basic principle lying under the opposition proceeding is that the party believes that a damage may be caused to him/her if the application for the registration of the mark is allowed. Often the opposition proceedings are triggered when an application for trademark is published in the government journal of the trademark office and enters the public domain. The marks are generally advertised in the Trademark journal which is published weekly on the official Intellectual property India website. Once the trademark application which amounts to damage to our client’s trademark is published we immediately notify our client, who wish to enforce the marks and we then proceed to initiate the opposition proceedings.
When can an Opposition be instituted against a Trademark Application?
A trademark Opposition proceeding is to be instituted within 4 months of the publication of a mark in the Trademark journal. The best way for Applicants who would like to enforce their marks and brands is to have your Trademark Attorneys watch for any identical or similar marks to your mark. In certain instances, someone associated with the Applicant may also file for a identical or similar mark in the same class as that of the original application, which can also be brought to the attention of the Trademark Attorney, who will then help institute an opposition proceedings. The key aspect here is the limited time period to file the oppositions. Trademark Oppositions are filed in the form of TM – O along with the fee.
Grounds of Trademark Opposition
An opponent can trigger opposition proceedings on the following grounds:
- Absolute grounds as stated in the section 9 of the Trademarks Act, which are also the basis on which the Examination report is issued.
- Relative grounds as stated in the section 11 of the Trademarks Act, which are also the basis on which the Examination report is issued.
- On the ground that the mark consists of names of chemical elements or international non-proprietary names as stated under section 13 of the Act.
- On the ground that the mark uses the names and representations of living persons or persons recently dead as stated under the section 14 of the Act.
- Relative grounds which includes if the application has prior mark is causing likelihood of confusion, bad faith, filing business name, domain name or trade name as mark, filing a well-known or famous mark and claiming to be the authorized owner.
Pre-Filing an Opposition before filing an opposition
We at Singhwal, generally do extensive research for collecting evidences and framing arguments for substantiating our opposition. We work hand in hand with the opponent to obtain the evidences and substantiate our grounds of opposition with enough evidences and case laws laid down by the Court of Law. We try to bring out the legal principles based on which the opposition grounds rely.
Filing a Notice of Opposition
The publication of the trademark application in the official gazette of the trademark registry initiates the proceedings of opposition. Then next step is notice of opposition is filed before the expiry of the prescribed period to the trademark registry.
The Notice should clearly state the grounds on which the opposition application is filed, along with name of the opposing party, rights or interest of the opposing party in the trademark in question and damages to the opposing party if the mark is allowed. Once the notice of opposition is filed then the applicant has to answer or file a response to the notice of opposition or give his defenses within a stipulated time as prescribed by Indian Trademark act in the form a counter statement which is to be filed within a period of 2 months from receiving the notice of Opposition.If a counter statement is not filed within the prescribed time limits, the application will be considered as abandoned by the Applicant. However, if the Applicant, chooses to respond, the opposition proceedings go further, which includes sending the counter statement as notice to the Opponent. The format for the Opposition, through accompanied by a Form that is mandated by the Trademark office, is similar to that of a Plaint that is filed before the Courts in India in that of a Trademark infringement suit. Except for the aspects of the sections including the cause of action, court fees and prayer, the basic format is highly comparable. The same is applicable to the response for an opposition as well, wherein the response is in the form comparable to that of a Written statement.
Filing a Response to Notice of Opposition
We at Singhwal are also experienced in filing response to opposition proceeding. Our trademark attorneys prepare a response based on legal arguments, evidences of authorized use or applicant of trademark application. A lot of research is put into substantiating our arguments and an immense effort is made to collect evidences to support the response.
The response is supported with case laws and legal arguments based on legal aspects of law. In Singhwal, our Trademark Attorneys are all highly proficient in making arguments, understanding the fact as well as the law, appreciating the evidences and properly putting it across to the registry.
At the next stage, evidences are also filed. Opportunity to file the evidences are provided for both the Opponent as well as the Applicant. The evidences also have to be filed within the prescribed time limits failing which abandonment may be triggered at this stage as well. The time limits in these cases have become non-extendible post the Trademarks Rules, 2017. Thus allowing the process to be conducted in an expedited manner. The Registrar then allows for a hearing as well, where both the Applicant as well as the Opponent is heard and finally the Registrar makes the decision as to whether the mark should be allowed or not. Any party may request that the hearing may be adjourned, however any such request must be made at least 3 days before the date of the hearing and with reasonable cause. In the event, at the stage of the hearing, if onw of the party does not appear, the consequence of the same would mean the dismissal of the opposition and allowing the mark or rejecting the application on the basis of the Opposition depending on which party has not appeared for the hearing. Once the opposition process ends and the opposition is rejected, the Application moves forward toward registration.
The remedy available in an opposition proceeding is the refusal or partial refusal to register a trademark. An appeal may be instituted by the losing party at IPAB, and further at the High Court. We also support our clients in such an appeal. The opposition proceedings as such is conducted by the Trademark Registry and the Trademark Office in India, wherein, the same is not the case in other jurisdictions. Though the European Union has an opposition division that deals with the Opposition matters, in the United States it is actually the Trademark trial and Appellate Board that handles the Trademark Opposition matters.
OPPOSITION IN THE UNITED STATES
The trademark opposition process in the United states though fundamentally same as to that of India. However, there are procedural differences in the same. For instance, the period for which the mark is open for opposition from the date of publication is one month from the date of publication. The publication of marks is done electronically by the Gazette weekly and is available on the USPTO website. In this one-month period, an interested party is to provide a notice for any such opposition or request an extension for such period for opposition by 90 days. This gives the Opponent or the Opposer a total of 120 days from the date of the publication for instituting the opposition proceedings. The opposition takes place in front of the TTAB, which is the Trademark Trial and Appeal Board. An important difference to be pointed out is the fact that the in the United States a single notice of Opposition may be filed against multiple marks. Provided that these marks belong to the same Applicant. In certain instances, a joint opposition is also allowed.
OPPOSITION IN THE EU
The opposition proceedings before the European Union is similar to that of the Indian proceedings. The period before which an Opposition may be instituted before the European Unions’ Opposition division is 3 months from which the publication of the subject mark has been made in the European Union’s Trademark Bulletin. Once the opposition proceedings are instituted by the Opponent, the Applicant has a time period of 2 months to respond. This is generally considered as a cooling off period in the European Union, rather than as simple the time period provided for the Applicant to respond. This time period may be used to reach a settlement between the Applicant and the Opponent. This may often be in the form of restricting the goods and services and the two parties agreeing to the revised description of the goods or services. The language in which the filing for the Opposition should be done in one of the two languages that the Applicant had opted at the time of filing the Application. The entire Opposition proceedings will have to adhere to the same language in which the notice of opposition was issued.
We at Singhwal have experienced Trademark Attorneys in instituting, responding and in generally conducting Opposition proceedings before the Indian Trademark Office. This coupled with our Trademark Watch services, offer our clients a holistic remedy with respect to identification and enforcement of Trademark infringement and dilution. We also assist our clients in filing for Opposition proceedings before the different Trademark Offices as per our clients needs.