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Tag: Trademark Disputes

  • EVIDENCE IN SUPPORT OF OPPOSITION: RULE 45 OF THE TRADE MARK RULES, 2017

    When a trademark application is under registration and an opposition is filed, a separate legal procedure begins. As per Section 21 of the Trade Marks Act, 1999, read with Rule 45 of the Trade Marks Rules, 2017, the applicant must file a counterstatement in response to the opposition filed.

    In the counterstatement, the applicant addresses and replies in detail to all the objections and contentions raised by the opponent. This reply must be filed, and a copy of the counter must be served to the opponent within the prescribed time limit.

    However, filing a counterstatement does not conclude the matter. There are further steps involved in the opposition proceedings. Once the applicant files the counterstatement, the opponent must submit a reply to the counterstatement, as per Rule 45 of the Trade Marks Rules, 2017. This stage is referred to as the “Evidence in Support of Opposition.”

    In this article, we will briefly discuss “Evidence in Support of Opposition” as provided under Rule 45 of the Trade Marks Rules, 2017. This includes an overview of the time limits for filing and serving the evidence, the contents that must be included, and the documents required to be submitted with the evidence in support of the opposition.

    RULE 45 OF THE TRADE MARKS RULES, 2017

    This rule provides that the opponent has two options. The opponent may either submit (adduce) evidence in support of the opposition or inform in writing that they do not wish to file any evidence and instead choose to rely solely on the statements and facts already mentioned in the notice of opposition. The rule states:

    • “Evidence in support of opposition.— (1) Within two months from service of a copy of the counterstatement, the opponent shall either leave with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence, including exhibits, if any, that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery.
    • If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.”

    PRESCRIBED TIME PERIOD

    Under Rule 45 of the Trade Marks Rules, 2017, the opponent is required to file evidence in support of opposition within two months from the date of receiving the counterstatement and serve the same to the applicant.

    If the opponent fails to submit the evidence or to communicate in writing that they do not wish to file any evidence within the prescribed time period, the opposition shall be deemed to have been abandoned.

    To avoid such lapses, TMWala’s trademark experts can help you monitor timelines, prepare the necessary affidavits, and ensure your documents are filed and served properly before the deadline.

    CONTENTS OF EVIDENCE IN SUPPORT OF OPPOSITION

    • The Evidence in Support of Opposition should contain a detailed response to each argument and contention raised by the applicant in the counterstatement.
    • This evidence should comprise all documents, materials, or records that the opponent relies upon to strengthen their case, including anything that supports the distinctiveness or prior use of their mark, or that may weaken the applicant’s position.
    • All such supporting documents and materials submitted by the opponent are attached as annexures to the affidavit filed as evidence in support of the opposition.

    DOCUMENTS TO BE SUBMITTED WITH EVIDENCE IN SUPPORT OF OPPOSITION

    The following types of documents are generally submitted along with the Evidence in Support of Opposition:

    • Documents related to the firm or company, such as MSME registration, GST certificate, or any other document establishing the legal status and identity of the opponent.
    • Documents related to the opponent’s trademark and copyright, including registration certificates, trademark applications, renewal certificates, or any other record proving ownership or prior use of the mark.
    • Any other supporting documents that strengthen the opposition, such as advertisements, invoices, promotional materials, sales figures, or correspondence showing the mark’s use and reputation in the market.

    THINGS TO KEEP IN MIND

    While drafting and compiling the Evidence in Support of Opposition, the following points should be carefully observed:

    • Ensure proper verification the affidavit must include para-wise verification, along with the date and place of verification, and must be duly signed by the opponent or an authorized representative.
    • Respond to every argument made in the counterstatement, ensuring that no contention raised by the applicant remains unaddressed.
    • Keep the content clear, direct, and concise. Avoid including unnecessary or irrelevant details.
    • Provide adequate supporting evidence, submit as many relevant documents as possible to substantiate your claims, and strengthen your arguments.
    • Maintain clarity and organization; all attached exhibits should be legible, properly numbered, organized, and directly relevant to the case.

    CONCLUSION

    The stage of Evidence in Support of Opposition plays a crucial role in the trademark opposition proceedings. It provides the opponent an opportunity to substantiate their claims with documentary proof and to counter the applicant’s contentions effectively. Properly prepared evidence, supported by relevant documents and a well-structured affidavit, can significantly strengthen the opponent’s position before the Registrar.

    It is important to adhere strictly to the procedural requirements and timelines under Rule 45 of the Trade Marks Rules, 2017, as failure to do so may lead to the opposition being deemed abandoned. Therefore, careful drafting, proper verification, and submission of comprehensive and well-organized evidence are essential to ensure that the opposition is effectively presented and considered by the Registry.

    If you need professional assistance in drafting affidavits, preparing evidence, or managing opposition timelines, TMWala can guide you through the entire process, ensuring accuracy, compliance, and a strong legal presentation of your opposition.

    FAQs

    1. What is the Evidence in support of opposition?
      It is the Opponent’s reply to the counterstatement, with affidavits and supporting documents.
    2. What is the Time limit for opposition?
      2 months from the date of service of the counterstatement.
    3. What documents are needed for opposition?
      Company/firm records, trademark certificates, promotional materials, invoices, sales records, etc.
    4. What if evidence in support of the opposition is not filed on time?
      Opposition shall be deemed to have abandoned.
    5. How can TMWala help?
      TMWala assists in drafting, organizing, and filing evidence to strengthen your opposition.

  • APPLE VS APPLE CINEMA: LANDMARK TRADEMARK DISPUTE EXPLAINED

    INTRODUCTION

    A high-profile legal battle is unfolding in Massachusetts, as Apple Inc. has filed a lawsuit against Apple Cinemas, a relatively small yet ambitious movie theatre chain. The Apple trademark lawsuit was filed on August 1, 2025, in the District Court of Massachusetts. In the lawsuit, Apple Inc. accuses Apple Cinemas and its parent company, Sand Media Corp Inc., of trademark infringement, alleging that using the word “Apple” is not just misleading but strategically crafted to exploit the world-renowned plaintiff.

    The case underscores the growing complexity and importance of Apple trademark infringement cases, especially as Apple Inc. expands further into media and entertainment through platforms like Apple TV+, Apple Studios, and Apple Originals. With the company’s digital footprint firmly planted in the entertainment space, the question of who can legally use the “Apple” name is now more significant than ever.

    THE ROOTS OF THE DISPUTE

    Apple Inc. is known globally for its innovations in consumer electronics, software, and media content. But the issue in the present matter doesn’t stem from technology at all; it’s about branding and consumer perception.

    The defendant founded Apple Cinemas in 2013 and operated a handful of theatres in the Northeastern United States for years without much controversy. But the situation changed dramatically in mid-2025, when Apple Cinemas opened a large-format theatre in San Francisco, just miles away from Apple’s headquarters in Cupertino.

    Apple argues that this expansion is not a coincidence but rather a deliberate move to capitalize on the brand recognition that the tech company has spent decades building. According to the lawsuit, Sand Media’s decision to open cinemas near Apple retail stores and headquarters is a strategic attempt to blur the lines between the two businesses in the minds of the public.

    Apple claims that Sand Media Corp Inc. is attempting to derive commercial benefits from the goodwill and reputation of the Apple brand, using its iconic name to gain leverage in business deals, particularly when negotiating leases with shopping malls where Apple’s retail stores are often major tenants.

    TMWala can help you avoid such conflicts by doing a comprehensive search to know whether such a mark exists or not.

    EFFORTS TO RESOLVE THE CONFLICT PEACEFULLY

    Before taking the legal route, Apple reportedly made several good-faith efforts to resolve the matter without litigation. In October 2024, Apple became aware that Sand Media Corp had filed two trademark applications with the U.S. Patent and Trademark Office (USPTO) for the marks:

    • Apple Cinemas
    • ACX – Apple Cinematic Experience

    The USPTO reviewed both applications and rejected them, citing potential confusion with Apple Inc.’s existing marks. These included Apple TV, Apple Studios, Apple Originals, Apple TV+, and an Apple Original, among others. These trademarks are connected to Apple’s extensive offerings in content creation, production, and distribution—putting the tech giant directly in competition with entertainment providers.

    Following this refusal, Apple’s legal team sent a cease-and-desist letter in December 2024, warning the defendants about the legal implications of continuing to use the Apple name. However, Apple claims that Sand Media ignored these warnings and instead doubled down on its expansion strategy, announcing plans to open 100 new theatres across North America over the next decade.

    As the lawsuit states: “Faced with defendants’ plan to expand to 100 theatres nationwide, Apple has no alternative but to file this lawsuit.”

    PUBLIC CONFUSION: THE HEART OF THE APPLE CINEMAS LAWSUIT

    One of the strongest arguments made by Apple in the lawsuit is the real and growing confusion among consumers. Apple points to numerous instances on social media, news articles, and online reviews where customers mistakenly assumed that Apple Cinemas was somehow affiliated with or owned by Apple Inc.

    In particular, when the San Francisco theatres opened, users on platforms like Facebook and Reddit posted comments asking if it was a new venture by Apple Inc. Others even speculated that Apple was entering the theatrical business reasonable assumption given Apple’s presence in digital media.

    What worries Apple most, however, is not just the confusion; it’s the reputation risk. Several online reviews for Apple Cinemas criticize the theatres for poor sound quality, outdated facilities, and lacklustre cleanliness. Apple Inc. argues that these reviews could harm its brand image, especially if consumers mistakenly associate them with the tech company.

    This forms a core element of the Apple Cinemas lawsuit that Apple is not just protecting its name but actively defending its hard-earned global reputation from being diluted by unrelated entities offering inferior customer experiences under a similar brand.

    THE LEGAL DEMANDS: INJUNCTIONS AND COMPENSATION

    In its complaint, Apple Inc. is asking the federal court for several forms of relief, as part of this Apple trademark lawsuit:

    1. Injunctive Relief

    Apple is requesting a court order prohibiting Apple Cinemas and all affiliated individuals or companies (including officers, agents, employees, landlords, licensees, etc.) from using the word “Apple” or any similar marks in relation to entertainment or cinema services.

    2. Financial Compensation

    Apple is also seeking monetary damages. This includes:

    • Profits earned by Apple Cinemas through the alleged misuse of the Apple name,
    • Damages for dilution of the Apple brand,
    • Attorney fees and related legal costs,
    • Any additional financial relief the court deems appropriate.

    The scope of the lawsuit makes clear that Apple is not merely interested in stopping the use of the name; it is also aiming to recover the financial value it believes has been unlawfully extracted by the theatre chain.

    APPLE CINEMAS RESPONDS

    While Apple Inc. is confident in its legal position, Apple Cinemas maintains that its brand has no connection to the tech giant and that the similarity in names is entirely coincidental. According to their legal team, the original name  “Apple Cinemas” came from a planned theatre location at the Apple Valley Mall in Rhode Island, though that specific theatre was never opened.

    Sand Media Corp insists that they have operated independently since 2013 and that their branding is distinct enough to avoid legal liability. They have also pushed back against Apple’s claims of confusion, stating that there’s no evidence that consumers were financially harmed or misled in any legally significant way.

    This rebuttal could play a major role as the case unfolds. Courts often consider factors such as:

    • The similarity in appearance and sound of the marks,
    • The relatedness of services (tech vs. theatres),
    • Actual consumer confusion and testimonials,
    • And the intent behind the use of the disputed name.

    WHY THIS CASE MATTERS

    The Apple trademark infringement cases that reach court are typically high-stakes and closely watched. This one is no exception, as it touches on how far trademark protection extends, particularly when companies branch into new markets like entertainment, where overlapping brand names become more common.

    The lawsuit will likely serve as a precedent for how courts balance existing brand power with new business entrants. For large corporations like Apple, defending trademarks is a matter of long-term brand equity. For small and mid-sized businesses like Sand Media Corp, the legal risks of overlapping branding, even if unintentional, can be catastrophic.

    CONCLUSION

    This case is not just about a movie theatre using a familiar word. It’s about how a brand, arguably one of the most powerful in the world, protects its identity across industries and continents. Apple’s lawsuit is a powerful reminder that a name carries weight, trust, and legal consequences.

    As the court begins to examine the details of the Apple Cinemas lawsuit, businesses of all sizes will be watching closely. The outcome could influence future branding decisions, particularly for startups and regional companies operating near major corporate giants.

    TMWala’s expert legal team can help you and your business avoid such costly legal disputes.

  • SECTION 27 OF THE TRADE MARKS ACT, 1999

    The Trade Marks Act, 1999 provides legal protection to registered trademarks, allowing owners to exclusively use and also to sue other trade marks for infringement. Section 27 of the Trade Marks Act also provides statutory protection to unregistered trademarks by upholding common law rights through the passing-off principle. In accordance with section 27 of the Act even though an unregistered trademark cannot be protected through an infringement case, the owner may still pursue legal action if someone tries to mislead consumers or damage the company’s reputation by abusing the mark.

    Let’s discuss section 27 of the Trade Marks Act, 1999 in detail.

    Section 27(1) of the Trade Marks Act:

    According to Section 27(1) of the Trade Marks Act an infringement suit cannot be filed against an unregistered trademark i.e. the trade mark not registered under the Trade Marks Act, by any person. 

    Illustration: 

    A person ‘X’ uses a trademark ‘PickliBoo’ for confectionery goods. The trademark ‘PickliBoo’ of ‘X’ is not registered under the Trade Marks Act. If other person ‘Y’ copies the mark ‘PickliBoo’, ‘X’ cannot file an infringement suit against the copied trademark of the ‘Y’ since the mark ‘PickliBoo’ is not registered by ‘X’. 

    Section 27(2) of the Trade Marks Act:

    Section 27(2) of the Trade Marks Act protects registered as well as unregistered trade mark. This section recognises common law rights of the trade mark owner to take action against any person for passing off goods or services as the goods or services of another person. Accordingly, even if a trade mark is not registered, the owner of such trade mark can still take action under the common law principle of passing off. 

    And, for this, the owner of the unregistered trade mark must prove that the said trade mark has reputation and goodwill in the market, there has been misrepresentation in the market and owing to this the use of the other copied mark would substantially damage the business of the owner of the unregistered trade mark.

    Illustration:

    A person ‘X’ uses a trademark ‘PickliBoo’ for confectionery goods. The trademark ‘PickliBoo’ of ‘X’ is not registered under the Trade Marks Act, however, enjoys substantial goodwill and reputation in the market and have extensive market base. If other person ‘Y’ copies the mark ‘PickliBoo’, ‘X’ can file a Passing off suit against the copied trademark of the ‘Y’.

    Conclusion

    In conclusion, section 27 of the Trade Marks Act restricts legal action for infringement to registered trademarks only. Nonetheless, it recognizes passing off as a powerful remedy to protect business reputation and goodwill for unregistered trademarks.

    Learn more about common law rights and passing off at WIPO and IP India.

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