India – FAQ’s on trade mark oppositions
Who can file the Notice of Opposition?
Under Indian law, ‘any person’ can file the notice of opposition. This includes individuals, companies, partnership firms and trusts. Two or more persons can be joined as opponents in the same notice of opposition provided the issues are the same.
What is the time period for filing the Notice of Opposition?
The notice of opposition can be filed within four months from the date the Trade Marks Journal is made available to the public.
Can I file the notice of opposition online?
Yes, the notice of opposition is generally filed online through the portal of Trade Marks Registry. Further, subsequent steps in the opposition proceedings can also be taken online. The Trademarks Registry with a view to encourage online filing offers 10% discount on the official fees.
Do I need to submit a Power of Attorney at the time of filing the Notice of Opposition?
Generally, a Power of Attorney should be submitted at the time of filing the notice of opposition. If the Power of Attorney is not available at the time of filing the opposition, it is advisable to file the POA within 4 weeks of filing of opposition.
My mark is not registered in India; can I file an opposition based on my pending application and use?
Yes, it is possible to file the opposition on the basis of the pending application or use. The Trade Marks Act, 1999 recognises common law rights.
What is the next stage once I file the Notice of Opposition?
Once the Notice of Opposition is filed, the Registrar takes it on record and serves a copy on the Applicant (with an official intimation to the Opponent) inviting their attention to file a Counter Statement. The Applicant is required to file the Counter Statement within two months (non-extendible) of the receipt of the Notice of Opposition. If the Applicant fails to file the Counter Statement within the stipulated time, the Applicant is deemed to have abandoned his application.
Is the Opponent required to file documentary evidence at the stage of filing the notice of opposition?
At the time of filing the notice of opposition no documentary evidence is to be filed. The stage for filing the evidence in support of opposition is later, as discussed below.
What are the timelines to be followed for adducing evidence by the parties?
The Opponent is required to adduce evidence by way of affidavit in support of the opposition or intimate to the Trade Marks Registry and the Applicant that it does not desire to adduce evidence but intends to rely upon the contents of notice of opposition within two months of receipt of the Counter Statement. If no action is taken by the Opponent within two months’ time period, the opposition shall be deemed to have been abandoned. The Opponent is required to deliver to the Applicant a copy of any evidence filed at the Registry and inform the Registrar that he has done so.
Similarly, the Applicant is required to file evidence in support of the application or intimate to the Trade Marks Registry and the Opponent that it does not desire to adduce evidence but intends to rely upon the contents of Counter Statement within two months of the receipt (by the Applicant) of the copy of the affidavit/evidence filed by the Opponent. If no action is taken by the Applicant within two months’ time period, the application (under opposition) shall be deemed to have been abandoned. Thereafter, the Opponent is required to file evidence in reply within one month of the receipt of the evidence filed by the Applicant. The pleadings are completed.
If I am not able to file the evidence within the time frame, are there provisions to file evidence at a later stage?
If the evidence is not filed within the prescribed time it can be filed later as ‘further evidence’. However this needs to be accompanied with an interlocutory petition explaining the reasons for delay in filing of the said evidence and asking for Registrar’s permission to condone the delay.
Once evidence is submitted by both parties, what is the next stage of proceeding?
Once the evidence is filed by both the parties, the matter is listed for hearing at the Trade Marks Registry enabling the parties to submit oral submissions.
The Registrar after examining the evidence and hearing both the parties passes a written order. If any party is aggrieved by the order, he/she can file an appeal at the Intellectual Property Appellate Board (IPAB) within three months of its receipt.
What is the time period for an opposition to be decided?
Considering the backlog at the Trade Marks Registry, it takes at least 5 years for a contested opposition to be decided.