Trademark Opposition

After a trademark application is advertised in the Trademark Journal, it becomes open to scrutiny by the public. During this stage, any third party who believes that the mark conflicts with their rights can file a trademark opposition. Opposition is not a mere objection—it is a formal legal proceeding before the Trade Marks Registry.

Who Can Oppose?

Opposition is not restricted only to registered proprietors. Any “person” who feels they may be harmed by the registration of the mark can oppose it. This includes:

• Owners of earlier registered or pending marks,

• Businesses with unregistered but well-established marks (common law rights),

• Trade associations, or

• Even consumers, if they can show a legitimate interest.

Grounds of Opposition

The Trade Marks Act, 1999 provides both absolute and relative grounds for opposing registration. Common grounds include:

• The mark is identical or deceptively similar to an existing registered or pending trademark.

• The mark is descriptive, generic, or lacks distinctiveness.

• The mark is likely to cause confusion or deception among the public.

• The application is made in bad faith.

• The mark is contrary to law, morality, or likely to hurt religious sentiments.

• The mark takes unfair advantage of, or dilutes, the reputation of a well-known trademark.

Procedure for Opposition

1. Filing Notice of Opposition

   • Filed using Form TM-O.

   • Must be submitted within four months from the date of publication in the Trademark Journal.

   • The notice sets out details of the opponent, grounds of opposition, and particulars of the earlier mark relied upon.

2. Counter-Statement by Applicant

   • The applicant must file a counter-statement (also on Form TM-O) within two months of receiving the opposition.

   • Failure to respond leads to the application being deemed abandoned.

3. Evidence Stage

   • Opponent’s Evidence: Filed in support of opposition (affidavits, invoices, ads, usage proof).

   • Applicant’s Evidence: Filed in support of the application (proof of use, distinctiveness, marketing material).

   • Opponent’s Reply Evidence: Optional, to counter applicant’s material.

4. Hearing

   • The Registrar schedules a hearing where both sides argue their case.

   • Evidence and oral submissions are considered before a decision is made.

5. Decision

   • The Registrar may either accept the application (allowing registration) or uphold the opposition (rejecting the application).

   • Appeals can be made to the Intellectual Property Appellate Board (now folded into the High Courts after tribunal restructuring).

Consequences of Opposition

• If the opposition succeeds → The trademark application is refused.

• If the opposition fails → The application proceeds to registration.

• Sometimes, parties may settle the dispute through withdrawal of opposition or consent agreements.

Key Points for Applicants

• Stay alert after advertisement—opposition can stall the registration process for years if contested.

• Timely filing of counter-statements is crucial—silence equals abandonment.

• Maintaining evidence of use (sales, promotions, consumer recognition) greatly strengthens the defense.

Trademark opposition is a safeguard built into the registration system. It ensures that no mark slips into the Register if it unfairly conflicts with prior rights or public interest. For businesses, it’s both a defensive weapon (to protect existing brands) and a hurdle (to overcome challenges to new filings). Success in opposition proceedings often depends on preparation, evidence, and strategic argument.