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Tag: Trademark Opposition

  • EVIDENCE IN SUPPORT OF APPLICATION: RULE 46 OF THE TRADE MARK RULE, 2017

    When a trademark application is under registration and an opposition is filed, the applicant has the opportunity to respond to the opponent’s claims by filing a counterstatement. After the counterstatement is submitted, the opponent provides evidence in support of the opposition. Once this evidence is received, the applicant must submit additional evidence to strengthen their case.

    As per Rule 46 of the Trade Mark Rule, 2017, the applicant is required to file this evidence within the prescribed timeframe after receiving the opponent’s evidence.

    This article provides an overview of Evidence in Support of Application under Rule 46, including timelines, contents, required documents, and key procedural considerations.

    RULE 46 OF THE TRADE MARK RULE, 2017

    Under this rule, after receiving evidence in support of the opposition, the applicant must either file evidence in support of the application or submit a letter stating that they do not wish to present any evidence and will rely on the contents of the counterstatement. This is provided under Rule 46. Rule 46 states:

    “Evidence in support of the application.— (1) Within two months on the receipt by the applicant of the copies of affidavits in support of opposition or of the intimation that the opponent does not desire to adduce any evidence in support of his opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any evidence but intends to rely on the facts stated in the counterstatement and or on the evidence already left by him in connection with the application in question. 

    In case the applicant adduces any evidence or relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies of the same, including exhibits, if any, and shall intimate the Registrar in writing of such delivery.

    If an applicant takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his application.”

    PRESCRIBED TIME PERIOD

    • Two months from receipt of evidence in support of opposition or notice of non-filing.
    • Missing the deadline leads to abandonment of the application.

    TMWala can assist in tracking deadlines, preparing affidavits, and ensuring timely submission to avoid abandonment.

    CONTENTS OF EVIDENCE IN SUPPORT OF APPLICATION

    Evidence submitted should:

    • Respond to all objections or contentions raised by the opponent in the Evidence in Support of Opposition.
    • Include documents and records that prove the distinctiveness, prior use, or rights of the applicant in the trademark.
    • Documents need to be attached as annexures to a verified affidavit.

    DOCUMENTS TO BE SUBMITTED WITH EVIDENCE

    The applicant should adduce common documents, including:

    • Applicants’ Company/firm details – such as MSME registration, GST certificate, etc.
    • Applicants’ Trademark-related documents – such as registration certificates, applications, renewal certificates, etc.
    • Supporting materials – such as invoices, advertisements, sales data, promotional materials, or correspondence showing use and reputation of the mark.

    THINGS TO KEEP IN MIND

    • Ensure para-wise verification of the affidavit. Make sure it has a date, place of verification, and signature of the opponent or person authorised to sign it.
    • Address every objection raised by the opponent.
    • Keep content clear, concise, and relevant.
    • Attach organized and legible exhibits.
    • Submit as much relevant evidence as possible to strengthen the case.

    TMWala can help in organizing evidence, drafting affidavits, and ensuring proper formatting and submission.

    CONCLUSION

    The Evidence in Support of Application is a critical stage in opposition proceedings. It allows the applicant to substantiate their claims and counter the opponent’s arguments with proof. Properly prepared evidence, supported by relevant documents and a structured affidavit, can greatly enhance the applicant’s position before the Registrar.

    Strict adherence to procedural requirements and timelines under Rule 46 is essential, as failure to submit evidence may lead to abandonment. TMWala provides professional guidance in drafting affidavits, compiling evidence, and managing timelines to ensure a strong legal presentation of your application.

    FAQs

    1. What is Evidence in Support of Application?
      It is the applicant’s affidavit with supporting documents submitted after receiving the opponent’s evidence or notice of non-filing.
    2. What is the time limit?
      2 months from receipt of the opponent’s evidence or notice.
    3. What documents are needed?
      Company/firm records, trademark certificates, invoices, advertisements, sales data, etc.
    4. What if the evidence is not filed on time?
      The trademark application is deemed abandoned.
    5. How can TMWala help?
      TMWala assists in drafting affidavits, organizing documents, and ensuring timely submission to strengthen your application.

  • 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 IN INDIA: WHAT, WHY, HOW

    INTRODUCTION

    One must obtain Trademark Registration in India to acquire Trademark Rights. In India, Trademark Rights are protected as statutory rights under the Trademark Act of 1999. Under the Act, this kind of protection is administered by the Controller General of Patents, Designs, and Trademarks. The Trademark Act of 1999 addresses trademark fraud prevention, registration, and protection. The rights of the trademark holder, penalties for trademark infringement, damages settlement, and trademark transfer processes are also covered.

    WHAT IS A TRADEMARK?

    A trademark is a type of intellectual property that sets one brand’s products and services apart from those of other brands. A trademark consists of a word, phrase, insignia, symbol, or combination of all in one. A trademark indicates who owns a certain commodity or service, and as the owner has the sole right to use the mark, they may object if someone else attempts to use it for their own goods or services.

    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 shape of goods, their packaging and combination of colours;”

    DIFFERENT KINDS OF TRADEMARKS IN INDIA

    According to WIPO, a trademark can be “A word or a combination of words, letters, and numerals can perfectly constitute a trademark. But trademarks may also consist of drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or color shades used as distinguishing features – the possibilities are almost limitless.” Hence, everything right from signs, symbols, sounds, fragrances, colours to shapes can be trademarked. The possibilities are endless. So long as a mark is unique, distinctive, and helps in source identification, it can be trademarked.

    HOW TO OBTAIN TRADEMARK REGISTRATION IN INDIA?

    You must first rule out the possibility that the mark you want to use as a trademark for your business is free. For this, you must check whether your proposed trademark is already used or registered by someone else. This is done by conducting a thorough trademark search.

    The process of submitting the registration application follows the completion of the search. Depending on one’s jurisdiction, the application must be submitted in Form TM-A either physically at the Trademark Registry Office or online at IP India’s official website. The fees will be determined for each class of products and/or services contained in the application, and the application must be submitted for registration of a single class or several classes.

    The necessary paperwork and all of the trademark’s details must be included with the application. A user affidavit attesting to the mark’s usage and providing proof of its previous use in commerce must be attached if the trademark was already in use prior to the application being filed (i.e., the owner wishes to claim prior use).

    After this comes the different stages of the trademark registration process, namely:

    Formality Check: Here, the Trademark Registry checks whether all the formalities and procedural aspects have been duly and correctly done by the applicant while filing its trademark application. During this stage, the status of your trademark application is either ‘Formality Chk Pass’ or ‘Formality Chk Fail’, depending on whether there are any defaults observed.

    Examination Stage: During this stage, the Examiner of Trademarks checks whether your proposed mark qualifies for trademark registration. Here, the examiner basically checks whether a mark possesses trademarkable qualities. For this, the Examiner typically refers to Section 9 and Section 11 of the Trade Marks Act, 1999. During this stage, the status of your trademark application is ‘Objected’.

    The applicant gets 1 month to file reply to the Examination Report to submit its defence on why their trademark deserves to be granted registration. If reply is found satisfactory, the trademark proceeds for acceptance, if not, then Hearing for the matter is scheduled. If the Examiner is not satisfied with the defence of the applicant, the trademark application is abandoned.

    Acceptance and Advertisement: If the Examiner is satisfied regarding the trademark-ability of the proposed mark, they accept the trademark and publish it in the trademark journal. A trademark stays Accepted and Advertised for a total period of 4 month, during which, any person in the entire world, who has an objection over the registration of the advertised mark, may oppose it. If the trademark does not receive any oppositions during this 4 month period, then the trademark receives its registration.

    Opposition: During the 4 month, any person may file opposition against the registration of a trademark under section 21 of the Trade Marks Act, 1999. Such opposition may be filed on varied grounds typically contained under section 9, 11, 27, 28, 29, 102, 103 and 104 of the Trade Marks Act. Grounds for filing opposition may be – Similarity or identicalness with a prior used trademark, descriptiveness of a trademark, trademark being of such a nature that would be likely to cause confusion or deception, lack of bona fide intention, infringement, passing off, false description of trademark etc.

    Counterstatement: After filing of the opposition, the applicant gets an opportunity in the form of counterstatement to file its written defence in support of its trademark within 2 months of service of the notice of opposition. Here, the applicant has to explain why their trademark deserves to be granted registration and how the allegations and contentions contained under the opposition are incorrect.

    Evidence Stage: After counterstatement comes the stage of evidence submission. Both the opponent and the applicant get an opportunity to present evidence by the way of affidavit in support of its opposition and trademark application respectively. They may however, choose not to give evidence at this stage and solely rely on the grounds contained under the opposition and the counterstatement.

    Hearing Stage: During this stage, the opposition proceedings are scheduled for hearing before the Registrar of Trademarks, who, after hearing the contentions of both the side, decides whether such trademark deserves registration or the same shall be refused registration.

    The registrar passes it order based upon written statements, evidences and arguments from both the parties. Such order is a written order.

    Registration: After this stage, if the Registrar is satisfied with the registrability of the trademark application, the trademark is entered into the trademark register and trademark registration is granted.

    REQUIRED DOCUMENTS

    To register a company’s trademark online in India you must follow a process, first you need to provide the following details to the Trademark Registry through TM form:

    • Applicant’s Name: The name of the person, company, or entity applying for the brand Trademark Registration.
    • Class: Specify the class in which your goods or services fall, such as sole proprietorship, partnership, private limited company, etc.
    • Trade Objectives: Provide a brief description of your trade objectives.
    • Brand Name: Clearly mention the name, logo, or slogan that you intend to use as trademark.
    • Registered office Address: Provide your registered office address from where you are going to operate your business. 

    To apply for Trademark Registration online, or simply to register a logo, you will need to submit the following papers in addition to these details:

    APPLICANT TYPEREQUIRED DOCUMENT
    IndividualPAN card
    Aadhar card
    ProprietorshipGST Certificate
    PAN Card
    Aadhar card
    CompanyIncorporation certificate
    Company PAN card
    MSME certificate (if applicable)
    Logo (if applicable)
    Partnership FirmPartnership Deed
    Partnership PAN card
    MSME Registration certificate
    Logo (if applicable)
    Limited Liability Partnership (LLPs)LLP Deed
    Incorporation certificate
    LLP PAN Card
    Logo (if applicable)
    TrustsTrust Deed
    Trust PAN Card
    Logo if applicable

    CONCLUSION

    Trademark Registration is an important process of protecting the identity of a brand and giving exclusive rights over its usage. Trademark protection in India is under the Trademark Act of 1999, which provides legal protection against infringement and abuse. Ranging from word marks to non-conventional marks, a large range of trademark categories can be registered, depending upon the business. The Trademark Registration process entails carrying out an extensive trademark search, submitting the proper application along with supporting documents, and familiarizing oneself with the legal usage of trademark symbols such as ™ and ®. Registration of a trademark not only provides businesses with legal protection but also helps to increase brand value and customer confidence in the marketplace.

  • SECTION 21 OF THE TRADE MARKS ACT, 1999

    A trademark is a unique symbol, logo, word, design or combination of these which is capable of being distinguished from the goods and services of one person or entity from that of another person or entity. By virtue of registration of a trade mark the owner of the trade mark enjoys exclusive right to use the same. The Trade Marks Act, 1999, which grants the registered trademarks legal protection and the owner exclusive rights, also regulated process of trade marks registration in India. Section 21 of the Act provides provisions related to opposition proceedings, allowing any person to challenge the registration of a trademark before it is officially granted.

    In addition, the Trade Marks Act, 1999 also provides process for opposition to a trade mark, where any individual or entity can challenge a trademark application if they feel, it violates their rights or creates confusion in order to preserve a fair and competitive market. This process of opposing a trade mark is outline under section 21 of the Trade Marks Act.

    Here is an article that discusses the provisions of section 21 of the Trade Marks Act in brief.

    Explanation of the terms used in the article:

    1. Oppose/Opposition: to contest or to challenge a trade mark.

    2. Opponent: The person who has filed opposition or the person who is opposing the Trade Mark applied for the registration.

    3. Applicant for Registration: The person who has filed application for the registration of the Trade Mark.  4. Opportunity to be heard: Giving the parties involved in the case equal and fair chance to present their arguments before deciding the case.

    Section 21(1) of the Trade Marks Act:

    According to Section 21(1) of the Trade Marks Act, any aggrieved person can oppose a trademark. It is not necessary for a person opposing a mark to be prior applicant or registered owner of trademark. However, it is a necessary requirement that the opposition must be in writing, in a prescribed manner and be filed within 4 months from the date of advertisement or re-advertisement of an application for registration in the Trade Marks Journal. 

    Section 21(2) of the Trade Marks Act:

    Section 21(2) of the Trade Marks Act imposes a duty on the Registrar of Trade Marks to serve a copy of the notice of opposition to the Applicant for Registration (person who filed application for registration of the trade mark). Further, section 21(2) of the Act imposes duty on the Applicant for Registration to reply to the notice of opposition by sending the counterstatement to the Registrar within two months from the date on which the Applicant for registration received the copy of the Notice of opposition.

    The Applicant for Registration, in the counterstatement, must state the grounds on which he relies for his trade mark application. Failure in doing say might result in the Application being abandoned and the same will not proceeded for registration. 

    Section 21(3) of the Trade Marks Act: 

    According to section 21(3) of the Trade Marks Act, if the Applicant for Registration sends the counterstatement within the prescribed period i.e. two months from the date of receipt of notice of opposition by the Applicant for Registration, the Registrar of Trade Marks is bound to serve a copy of the same to the opponent. 

    Section 21(4) of the Trade Marks Act: 

    After the Applicant gives the counterstatement in reply to the notice of opposition, the opposition process moves on to the evidence stage. According to section 21(4) of the Trade Marks Act, both the parties to the case i.e. the opponent and the applicant for registration are required to serve evidence in support of their claims. The opponent is required to file evidence in support of notice of opposition within two months from the date he receives the copy of the counterstatement.

    And the Applicant for Registration is required to file evidence in support of trade mark Application and counterstatement within two months from the date he receives the evidence filed by the opponent. Further, this sub-section provides that if the Registrar of the Trade Marks thinks fit, it must also provide both the parties the opportunity to be heard. 

    Section 21(5) of the Trade Marks Act: 

    Section 21(5) of the Trade Marks Act provides provision related to the decision by the Registrar of the Trade Marks. Accordingly, it provides that after considering the arguments of both the parties, evidence submitted and objections raised by the opponent in the notice of opposition, the Registrar of Trade Marks must decide whether to grant the registration to the trade mark applied for registration unconditionally, impose any conditions/ limitations on the same or refuse the registration. 

    Section 21(6) of the Trade Marks Act:

    According to section 21(6) of the Trade Marks Act, if the opponent or the applicant does neither resides nor conduct its business in India after receiving of the notice of opposition or the counterstatement, the Registrar can demand security for costs of proceedings before him. In case of failure to give the security for cost of proceedings, the notice of opposition or the application, as the case may be, will be treated as abandoned.

    Section 21(7) of the Trade Marks Act: 

    According to section 21(7) of the Trade Marks Act, if any party i.e. the opponent or the applicant for registration, desires to make any correction of any error or any amendment in the notice of opposition or a counter-statement, he can request to the Registrar of Trade Marks for the same. And, if the Registrar thinks fit, he may allow such correction or amendment. 

    CONCLUSION

    In conclusion, section 21 of the Trade Marks Act provides the provisions related to the process of opposing a trade mark in India. Accordingly, the opposition can be filed by any person within four months from the date of advertisement or re-advertisement. A copy of the said notice needs to be served by the Registrar of Trade Marks to the Applicant and the Applicant is bound to file counterstatement within two months from the date of the receipt of the copy of the notice, else the trade mark Application may be deemed to be abandoned.

    After the counterstatement is given, both the parties are required to be provide evidences to support their claims. After considering such evidences, giving opportunity to be heard and objections raised by the opponent in the notice of opposition, the Registrar may either grant registration to the trade mark or refuse the same.

    For a detailed legal perspective on trademark opposition, you can visit this resource to explore case studies and official guidelines.