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Tag: Trademark Opposition Process

  • 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.

  • TRADEMARK REGISTRATION PROCESS AND FEE

    INTRODUCTION

    You must first register your trademark if you wish to acquire rights over it. In India, registering a trademark is a crucial first step for any company or individual looking to build and safeguard their brand. One registers their brand under the trademark legislation of 1999, which is overseen by the Office of the Controller General of Patents, Designs, and Trademarks, to safeguard their brand identification. Following registration, the owner of the trademark is granted exclusive rights to the class of goods and services it represents.

    The steps involved in registering a trademark in India, including how to do so, the trademark registration process, the trademark registration timeline, and the trademark filing fees, will all be covered in this article.

    TMWALA ensures compliance with each step, which makes from trademark registration journey smooth.

    TRADEMARK

    One form of intellectual property that distinguishes one brand’s goods and services from those of other brands is a trademark. A trademark might be a single word, phrase, symbol, emblem, or a combination of these. Since the owner of a trademark has the sole right to use it, they may complain if someone else tries to use it for their products or services. A trademark identifies the owner of a particular good or service.

    Trademark as defined under section 2(1)(zb) is “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours;”

    HOW TO REGISTER A TRADEMARK IN INDIA?

    The first step is to determine whether the mark you are attempting to acquire for your company is available. To accomplish this, you should conduct a trademark search, which varies depending on your jurisdiction. You may also look for the mark’s availability abroad. You can then continue with the registration process if the mark is available.

    Either in person at the trademark registry office or online at IP India’s official website, the trademark application must be filed in FORM TM-A. Depending on the nature of the business, the application may be submitted for a single class or multiple classes.

    TRADEMARK REGISTRATION PROCESS

    Trademark Registration Process in India includes the following steps

    1. Trademark Search Report: To make sure the mark is distinctive and unique, one must conduct a trademark search before applying. Because it helps to prevent future legal conflicts, this step is crucial. It saves time, money, and effort. One can do the trademark search on the IP India website: https://ipindiaservices.gov.in
    2. Filing of Trademark Application: The trademark application is filed on the official IP India website, together with the necessary paperwork. The applicant can begin utilizing the ™ symbol with the brand name or logo after applying. You have the option of filing offline or online.
    3. Vienna Codification: The Registrar of Trademarks uses the Vienna Classification to assign a trademark to a different classification if it contains any figurative marks.
    4. Formalities Chk Pass: At this point, a formality check is performed on the application and the supporting documentation. A Formality Check Report is generated in the event that any procedural flaws are discovered. Within a month, the applicant has to make the necessary corrections.
    5. Trademark Examination: The application is examined by a trademark officer to see whether it is in compliance or if it matches any previously registered marks. If it does, the officer provides a trademark examination report that includes the objections discovered during the examination. Aspects including distinctiveness, descriptiveness, and similarity to previous trademarks are evaluated throughout the assessment. The officer will object and identify competing trademarks in the same class if the mark violates Sections 9 or 11 of the Trade Marks Act, 1999.
    6. Reply to Examination Report: After obtaining the Examination Report, the applicant or their representative has one month to address any objections. The application may be abandoned if no response is received. The application moves forward to approval if the register is satisfied with the response and all legal requirements are met.
    7. Show Cause Hearing: A hearing is set if the response is not sufficient. The application may be accepted conditionally or rejected by the examiner. The candidate has one month to meet the requirements if they are accepted conditionally. Publication of the trademark occurs only after compliance. The applicant is entitled to appeal if their request is denied.
    8. Journal Publication: Following acceptance, the trademark is published for four months in the Trademark Journal. Third parties may object to the application during this period.
    9. Withdrawal of Acceptance: After providing the applicant a chance to be heard, the Registrar may decide not to accept a trademark application under Section 19 of the Trade Marks Act, 1999. Usually, this takes place prior to the registration being finalized.
    10. Opposition: Anybody may contest the trademark within four months after its publication, per Section 21 of the Trade Marks Act, 1999. Typical reasons for protest include:
      • Similarity or identity with an earlier or existing registered trademark.
      • Lack of distinctive character.
      • Descriptive nature of the mark.
      • Application made in bad faith.
      • Use of customary terms in current language or trade practices.
      • Likelihood of public deception or confusion.
      • Conflict with existing laws.
      • Prohibition under the Emblems and Names (Prevention of Improper Use) Act, 1950.
      • Content is likely to offend the religious sentiments of any class or section of people.
    11. Counterstatement and Evidence Stages: The applicant is required to submit a counterstatement after being served with a notice of objection. This is succeeded by:
      • Evidence in support of opposition under Rule 45(1).
      • Evidence in support of application under Rule 46(1).
      • Further evidence in reply by the opponent under Rule 47.
      • Additional evidence under Rule 48 of the Trade Marks Rules, 2017.
    12. Hearing with Third Party (if applicable): Following the filing of all supporting documentation, the Trademark Registry Officer holds a hearing to determine whether or not the opposition can be maintained.
    13. Trademark Registration: A Trademark Registration Certificate is granted if there is no resistance or if all oppositions are settled in the applicant’s favor. After that, the applicant may combine their trademark with the ® symbol.
    14. Renewal :The ten-year validity of a registered trademark can be extended as many times as the registered proprietor desires. Non-use for more than five years, failure to renew, mark modifications, addition of goods or services, inconsistencies with Sections 9 and 11 of the Trade Marks Act, 1999, omissions, fraudulent registration, or market confusion are all grounds for rectification.

    TRADEMARK REGISTRATION TIMELINE

    The Trademark registration timeline starts with a trademark search:

    • Trademark Search: 1–2 Days
    • Filing of Trademark Application: 1–3 Days
    • Vienna Codification: 3–5 Days
    • Formalities Check: 7–15 Days
    • Trademark Examination: 1–3 Months
    • Reply to Examination Report: Within 1 Month
    • Show Cause Hearing(if required): 1–2 Months
    • Journal Publication: 4 Months
    • Withdrawal of Acceptance(if applicable): Before registration
    • Opposition: Within 4 Months
    • Counterstatement and Evidence Stages: 6–9 Months
    • Hearing with Third Party(if applicable): 1–2 Months after the evidence stage
    • Trademark Registration: 1–2 Months after opposition resolution
    • Renewal: Every 10 Years

    Overall Timeline

    • Without Opposition: 12–18 months
    • With Opposition: 24–30 months

    TRADEMARK FILING FEES

    The trademark filing fees in India can differ based on the applicant type and the filing method. For individuals, startups, and small businesses, the fee is rupee 4,500 per class for online filing,i.e., E-filing, and rupee 5,000 per class for physical filing. For other entities, such as companies, LLPs, and partnership firms, the fee is ₹9,000 per class for online filing and ₹10,000 per class for physical filing.

    You can get the best trademark filing deal with TMWALA.

    CONCLUSION

    In India, trademark registration is essential for having exclusive rights over your applied trademark. The Trademark registration process in India includes several steps from conducting a trademark search to trademark renewal.

    The Trademark registration timeline typically takes 12 to 18 months to complete without opposition, and with opposition, it may take up to 30 months.

    The trademark filing fee depends on the applicant type and the filing method. For online filing, it can be 4,500 rupees or 9,000 rupees, and for offline filing, it can be 5,000 rupees or 10,000 rupees. Differ based on business type, whether a single firm or LLP, or a Partnership firm.

    TMWALA can make this complicated journey easy for you by dealing with all the compliance checks and offering you the best advice at each stage.