Trademark & IP

Trademark Opposition/Counter Reply

Drafting and Filing of Trademark Opposition/Counter Reply at an all-inclusive price, including Government Fees*

Complete By* : 13 Mar, 2024

Pricing Summary

Traditional CA/CS Price : ₹ 15,000 /-

Other Online Price : ₹ 8,000 /-

Our Base Price : ₹6,356 /-

Govt. fees & taxes : ₹1,144 /-

You Pay: 7,500/- all inclusive

Government Fee included in above

You Save : ₹500/- to- 8,500 /-

What do you get?

15 Mins free Consultation with an EXPERT

Filling of Opposition

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Trademark Opposition

 

Trademark opposition means an opposition to the registration of a trademark or a collective trademark or a certification trademark, as the case may be and includes an opposition to grant of protection to an international registration designating India and opposition to alteration of registered trademark.

 

Documents Required

Applicant details (Name, Address, Nationality)

Registration certificate in case of an entity

Power of Attorney

Affidavit (Information about the trademark)

Grounds of opposition

* (All documents in Pdf scanned. Image file in jpeg format)

* (All documents to be Self Attested and signed on each page)

Trademark & IP

Application for Trademark Opposition

Submission of Opposition/ Counter reply on a Trademark

Steps for Filing

Collect information and documents

Preparation of online application

Framing of suitable reply to application/ to the opposition raised

Tracking of the Opposition filed

Why should you go for a

Trademark Opposition/ Counter reply

To prevent confusion

Anyone who believes that the published mark might create confusion among the public can file for the opposition while the onus of defending the trademark lies in the hands of trademark applicant.

Maintain brand popularity

A brand is created through the public popularity and demand, and it is very important to consult the public for approval about the registrability of the applied trademark.

To avoid Abandonment

Filing reply to an objection is important to reach the next stage of the registration process. Failure in filing the reply to trademark objection within a month from the date of dispatch would lead to the abandonment of the whole TM application.

Establish your Marks Distinctiveness

The Trademark objection reply letter provides the opportunity to present the ground as to why the applicant is entitled to get his/her mark registered. With written reply to the report, one can put forward the arguments on how the objections are not applicable to the TM application and show the mark’s distinctive features.

Intellectual property (IP)

Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.

IP is protected in law by, for example, patents, copyright, trademarks, Industrial designs, Trade Secrets and Geographical Indications (GIs), which enable people to earn recognition or financial benefit from what they invent or create. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish.

 

What is Trademark Opposition?

Trademark opposition means an opposition to the registration of a trademark or a collective trademark or a certification trademark, as the case may be and includes an opposition to grant of protection to an international registration designating India and opposition to alteration of registered trademark.

 

This is a proceeding that takes place before the Registrar of Trademarks, where one party seeks to prevent another form registering a Trademark.

 

Trademark Opposition comes at a stage after the registrar has approved the trademark application on the distinctiveness factor as per the codification process and publishes the trademark in the journal for the third-party opposition. The published trademark can be opposed within a period of 90 days, which can be extended further by 30 days, beginning from the day it was first published.

If the trademark is opposed, an opposition proceeding is initiated, after which, both the parties involved are required to come to a conclusion and make a decision. The decision whether the mark can be registered or abandoned would be made. There is no restriction on filing an opposition. 

What is a Trademark Counter Reply?

When the Applicant files a reply to the opposition raised, within 2 months (not extendable) of the receipt of the notice of opposition. If no counter-statement is filed,  the application for Registration of Trademark is deemed to be abandoned by the Applicant.

Documents Required:

The documents required for trademark opposition are-

·        Applicant details (Name, Address, Nationality, Registration certificate in case of an entity)

·        Power of Attorney

·        Affidavit (Information about the trademark)

·        Grounds of opposition

 

Opposition vs Objection

Opposition is different from Objection. This difference stems from the person who raises the issue. If the Registrar of Trademarks  raises queries with relation to the registration of a Trademark, it is called an ‘Objection’. When the query is raised by any other person (third party) it is called ‘Opposition’

 

Grounds for Opposition:

The grounds for filing a Trademark Opposition is unique to each and every case. However, some of the basic grounds for opposing a trademark provided under the Trademarks Act, 1999 are as follows:

 

1. The mark is similar or identical to an earlier or existing registered trademark.

2. The mark is not of distinctive character.

3. Application for the trademark is made with bad faith (mala fide intention).

4. The mark is descriptive in nature.

5. The mark is likely to deceive the public or cause confusion.

6. The mark contains matters that are likely to hurt religious feelings of any class or section of people.

7. The mark is prohibited under the Emblem and Names Act, 1950

8. The mark is contrary to the law or is prevented by law

 

Trademark Registration follows a three-tier process:

1. Application is made for Registration of a Trademark

2. The Registrar of Trademarks may raise Objection(s) to such application and ask for explanation or a third party may oppose the registration of such application for registration. The opposition has to be done within 3 (three) months (and a further period of one month) from from the date of the advertisement /re-advertisement in the Trademark Journal

3. Communication to the Applicant either granting/rejecting the application. 

It is to be noted that once the Trademark is registered, and thereafter a person realises that the Trademark is infringing on his registered trademark, the person is left with the option can only initiate rectification proceeding to cancel or vary the registration. 

 

Procedure for filing Trademark Opposition

Notice of Opposition: File a notice of opposition on a mark that appears in the Trademark Journal within stipulated time in FORM TM -O with applicable fees. The notice of opposition has to be filed and contested at the same office or branch where the original application for trademark registration has been filed by the Applicant.

Counter Statement: The Applicant files a Counter-Statement within 2 months (not extendable) of the receipt of the notice of opposition. If no counter-statement is filed,  the application for Registration of Trademark is deemed to be abandoned by the Applicant.

Adducing (Producing)  Evidence in Trademark Opposition

By the third party who has initiated the opposition: The opposing party has to produce evidence to support its objection within 2 months (extendable by one month) of receiving the copy of the counter-statement filed by the applicant. The party also has the option of refraining from adducing any further evidence and rely solely on the facts stated in the opposition notice.

By the applicant who has applied for Registration of Trademark: The applicant is also allowed a time of two months to produce evidence in his favour. He also has an option of not providing any further evidence and to rely only on the counter statement or on the facts as submitted alongwith his Application.

Further evidence in reply by third party: The Opponent is given one additional month (extendable by 1 month) to file Evidence in response to the Applicant's evidence.

No further evidence is allowed to be filed hereafter. However, the Registrar can exercise his discretion to ask for more evidence subject to cost and terms. An interlocutory application needs to be filled by the concerned party for this.

Hearing: After the evidence filing stage, the Registrar gives notice to the parties stating the date of hearing, which shall be at least one month after the date of the first notice. Hearing is based on the notice of opposition, counter-statement, and evidence filed. The parties are required to notify the Registrar about their intention to appear for the hearing. Party(ies) have option of adjourning the hearing (maximum of two times).

If Applicant is not present for the hearing, the application may be treated as abandoned.

If the Opponent is not present, the opposition may be dismissed for want of prosecution and the application may proceed to registration.

Appeal: The party aggrieved by the Registrar's decision may challenge the same by filing an appeal before the Intellectual Property Appellate Board.


 

Who can initiate Trademark opposition proceedings in India?

As per Section 21 of the Trademarks Act, 1999, 'any person' can file the notice of opposition. This includes any natural or legal person like companies, LLPs, Partnership firms etc. Trademark opposition filing can be filed by an Indian or foreign customer, member of the public or competitor or any other person. In fact, if two or more persons have the same issues against a trademark, they can be joined together as opponents.

 

Generally, the following person(s) file a trademark opposition:

The owner of an earlier trademark application or registration covering a similar Trademark for similar goods.

or

A person who is using the same or similar trademark prior to the client, but who has not registered the trademark.

 

 

What is Trademark? What is its significance?

Meaning

A trademark is a type of intellectual property consisting of a recognisable sign, design, or expression which identifies products or services of a particular source from those of others, although trademarks used to identify services are usually called service marks. It is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. The only way to protect a business’s own unique identity is to register it as a trademark. A registered trademark is a business's intellectual property or intangible asset. It acts as a protective cover of the company’s investment made in the logo or brand. In India, trademarks are registered by the Controller General of Patents, Designs and Trademarks, Ministry of Industry and Commerce, Government Of India and are regulated under The Trademark Act, 1999. The registration provides the right to sue against others who try to copy your trademark.

Significance

In the present era, it is absolutely unthinkable to imagine a business of a modern, large corporation without its trademark, and it can be said that it is the easiest and the fastest way of communication between the manufacturers of goods, i.e. the service providers and those for whom such goods and services are intended, i.e. the end users. Consumers’ purchasing decisions are influenced by trademarks and the reputation such brands represent. In a single brand or logo, trademarks can convey intellectual and emotional attributes and messages about the company, and its reputation, products and services. In addition to all advantages that a trademark possesses, it acts as a marketing tool and a basis for establishing a positive image in the public. The rightful ownership of a reputable trademark gives the company an immediate competitive advantage.

 

Difference between Trademark, Copyright and Patent

Copyright, Patent and Trademark are all different types of Intellectual Property (IP). Although these three types of IP are very different, we often confuse them.

A copyright is a collection of rights automatically vested to you once you have created an original work. The power of copyright allows you to choose the way your work is made available to the public.

Patents incentivizes inventors to publicly disclose their inventions in exchange for certain exclusive rights. A patent protects inventions. In this respect the patent system compliments copyright protection by providing protection for functional aspects of the software, which are not protected by copyright.

“A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Examples include brand names, slogans, and logos. (The term “trademark” is often used in a general sense to refer to both trademarks and service marks.)”

Similar to copyright, a person does not need not register a trademark or service mark to receive protection rights, but there are certain legal benefits to registering the mark. There is rarely an overlap between trademark and copyright law but it can happen — for instance, when a graphic illustration is used as a logo the design may be protected both under copyright and trademark.

 

Symbols

TM (Trade Mark): ™ is a symbol used to indicate to consumers and competitors that one is claiming a trademark and that it is in use.

SM (Service Mark): SM is used for trademarks that protect services only.

The R ® symbol:  This symbol is reserved for registered trademarks, protecting both goods and services. This symbol can be used when one has an official certificate of registration of the trademark in the country where the mark with the ® symbol is used.

 

Trade Marks Registry

 

The Trade Marks Registry was established in India in 1940 and presently it administers the Trade Marks Act, 1999 and the rules thereunder. It acts as a resource and information centre and is a facilitator in matters relating to trade marks in the country. The objective of the Trade Marks Act, 1999 is to register trade marks applied for in the country and to provide for better protection of trade mark for goods and services and also to prevent fraudulent use of the mark. The main function of the Registry is to register trade marks which qualifies for registration under the Act and Rules.

 

The Trade Marks Registry was established in India in 1940 and presently it administers the Trade Marks Act, 1999 and the rules made thereunder. It acts as a resource and information Centre and is a facilitator in matters relating to trademarks in the country.

 

The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the country and to provide for better protection of trademark for goods and services and also to prevent fraudulent use of the mark.

 

The main function of the Registry is to register trademarks which qualify for registration as per provisions of the Trade Marks Act and Rules, and to maintain the Register of trademarks.

 

After accession to the Madrid Protocol, a treaty under the Madrid System for international registration of trademarks, the Trade Marks Registry also functions as an office of origin in respect of applications made by Indian entrepreneurs for international registration of their trademarks and as an office of the designated Contracting party in respect of international registrations in which India has been designated for protection of the relevant trademarks.

 

The Head Office of the Trade Marks Registry is at Mumbai and branch offices are at Ahmedabad, Chennai, Delhi and Kolkata. For the purposes functions related to international applications and registrations under the Madrid Protocol, an International Registration wing is set up in the Head Office of the Trade Marks Registry at Mumbai.

 

Apart from the above, the Registry has to discharge various other functions like offering preliminary advice as to registrability; causing a search to be made for issue a certificate under Section 45(1) of the Copyright Act, 1957 to the effect that no trademark identical with or deceptively similar to such artist work as sought to be registered as a copyright has been registered as a trademark; providing public information and guidance to the public on the subject; providing information to various government agencies including Police, Central Excise personnel, Public Grievance Redressal, maintenance of top class IP library, the production of annual statistical report, production of official Trade Marks Journal in electronic form and submit an Annual Report to Parliament.

 

The Controller General of Patents, Designs and Trade Marks heads the TRADE MARKS Registry offices and functions as the Registrar of TRADE MARKS. He, from time to time, assigns functions of the Registrar to other officers appointed by the Central Government and such officers also function as Registrar in respect of matters assigned to them.

Presently all the functions of the Trade Marks Registry are performed through an automated Trade Marks System. The Central Server of TMR is at Intellectual Property Office (IPO) Building in Delhi and Disaster Recovery server is at IPO, Mumbai. All branches of the Trade Marks Registry are connected to the main server in Delhi with Virtual Private Network (VPN). All the actions done by the office staffs through the TMS are recorded in the central server on real time basis.

 

TMclass helps you to search for and classify Goods and Services (terms) needed to apply for trade mark protection. You can also translate a list of Goods and Services and verify if those terms appear in the classification databases of the Participating Offices highlighted below.

 

Administrative Steps Involved

 

An application for registration of trademarks is received at the Head office or a branch office of the Trade Marks Registry within whose territorial limits the Principal place of the business of the applicant is situated. The digitization and formality checking of the application is done at the respective offices.

 

The Application is then examined mainly as to whether the relevant mark is capable of distinguishing applicant’s good or services, whether it is prohibited for registration under any law for the time being in force, whether the registration of the relevant mark is likely to cause confusion or deception because of earlier identical or similar marks existing on records. The Examination of all applications is done centrally in the Head Office of the TRADE MARKS Registry at Mumbai.

 

The Registrar on consideration of the application and any evidence of use or distinctiveness decides whether the application should be accepted for registration or not, and if accepted, publishes the same in the Trade Marks Journal, an official gazette of the Trade Marks Registry, which is hosted weekly on official website.

 

Within four months from the date of publication any person can file an opposition in such cases the opposition proceeding is conducted at respective office of the Trade Marks Registry.

 

Under opposition proceeding, a copy of the notice of opposition is served to the applicant who is required to file a counter-statement within two months failing which the application is treated as abandoned. The copy of the a counter-statement is served to the opponent, who leads evidence in support of his case by way of affidavit, then the applicant leads evidence. After that the opponent files evidence by way of rebuttal. On completion of evidence, the matter is set down for a hearing and the case is decided by a Hearing officer.

 

The Registrar’s decision is appealable to the Intellectual Property Appellate Board.

 

Public search of Trademarks

https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx

 

FEES

First Schedule:- Trade Mark Rules 2017

 

Entry No

On what payable

 

Amount in INR.

Corresponding Form Number

 

For Physical filing

For E-filing

1

Application for registration of a trademark /collective Marks / Certification Mark / Series of trademark for specification of goods or services included in one or more than one classes.

TM-A (287 KB)

Where the applicant is an Individual / Startup/Small Enterprise

5,000

4,500

 

In all other cases (Note: Fee is for each class and for each mark )

10,000

9,000

2

On a notice of opposition under section 21(1), 64, 66 or 73 or application for rectification of register under section 47 to 57, 68, 77 or application under rule 99, 103, 135,140 or On application under section 25 of Geographical Indication of Goods (Regulations and Protection) Act, 1999 to invalidate a trademark or counter statement related thereto. (Note: Fee is for each class opposed or counterstatement filed)

3,000

2,700

TM-O (49 KB)

3

For renewal of registration of a trademark under section 25 for each class

10,000

9,000

TM-R (41 KB)

Application for renewal with surcharge of registration of a Trademarks under section 25 (3) for each class

5,000 Plus renewal fee applicable under entry 3

4,500 Plus renewal fee applicable under entry 3

 

Application for renewal with surcharge/ restoration and renewal of a Trademarks under section 25 (3), 25 (4) for each class

10,000 Plus renewal fee applicable under entry 3

9,000 Plus renewal fee applicable under entry 3

 

4

On application under section 45 to register a subsequent proprietor in case of assignment or transfer for each trademark

10,000

9,000

TM-P (64 KB)

On application for: Certificate of the Registrar under section 40(2), or For approval of the Registrar under section 41, or Direction of the Registrar for advertisement of Assignment without goodwill under section 42, or Add or alter a registered trademarkunder section 59(1) for each trademark, or Conversion of specification under Section 60 for each trademark.

3,000

2,700

 

On application for: Extension of time for applying for direction under section 42 for advertisement of assignment without goodwill, or Extension of time for registering a company as subsequent proprietor of trademarks under section 46(4),or Consent of Registrar to the assignment or transmission of a certification trademark under section 43, or Change a name and / or description of a registered proprietor or a registered user of a trademark under section 58 for each trademark.

2,000

1,800

 

On application for: Dissolution of association between trademark sunder section 16(5), or Change in address or address for service in India of Registered Proprietors under section 58 for each trademark, or Request for cancellation of an entry in the register or part thereof under section 58 for each trademark.

1,000

900

 

5

Application under section 49 to a registered user of a registered trademark in respect of goods or services Or On application under clause (a) of sub-section (1) of section 50 to vary the entry of a registered user of one trademark where the trademarks are covered by the same registered user in respect of each of them Or On application under clause (b), (c) or (d) of sub-section (1) of section 50 for cancellation of entry of a registered user of one trademark Or On notice under rule 95 (2) of intention to intervene in one proceeding for the variation or cancellation of entries of a registered user of a trademark (Note: applicable fee is for each mark)

5,000

4,500

TM-U (118 KB)

6

Request for search and issue of certificate under rule 22(1)

10,000

9,000

TM-C (49 KB)

Request for an expedited search and issuance of certificate under rule 22 (3)

Not allowed

30,000

 

7

On application for: Extension of time, or Certified copy, or Duplicate Registration Certificate, or inspection of document,or Particulars of advertisement to registrar, or seeking grounds of decision of Registrar, or Enter in the register and advertise a note of certificate of validity under rule 127, Amendment in trademark application, or Particulars of advertisement of a trademark to Registrar under rule 41.

1000

900

TM-M (80 KB)

On application for: Deposition of regulation of collective trademark under section 66 or alteration of regulation of certification trademark under section 74 (2), or Seeking Registrar preliminary advice, or For division of an application.

2,000

1,800

 

On application for: Review of Registrar’s decision, or Petition (not otherwise charged) for obtaining Registrar’s order for any interlocutory matter in a contesting proceeding, or Any other matters not covered in other TM forms.

3,000

2,700

 

On request for an expedited certificate of the Registrar (other than a certificate under section 23(2) of the Act) or certified copies of the documents under proviso to rule 122 (Note: for entry in respect of each registered trademark or for each document)

5,000

4,500

 

On application under rule 34 for expedited process of an application for the registration of a trademark

Where the applicant is an Individual / Startup/Small Enterprise

In all other cases (Note: fee is for each class and for each mark)

Not allowed

20,000

 

Not allowed

40,000

 

Request to include a trademark in the list of well- known trademark(Note: applicable fee is for one mark only.)

Not allowed

1,00,000

 

8

On application for registration of a person as a trademark agent under rule 147 & 149.

5,000

4,500

TM-G (41 KB)

For continuance of the name of a person in the Register of a trademark Agents under rule 150 for every Five year to be paid on or before 1st day of succeeding financial year.

10,000

9,000

 

On application for restoration of the name of a person to the Register of trademarks agents under rule 153 within 3 years from the date of removal of registration.

5,000 Plus continuation fee as mentioned in entry number 20

4,500 Plus continuation fee as mentioned in entry number 20

 

On application for an alteration of any entry in the Register of trademarks Agent under rule 154

1,000

900

 

 

Handling fee for certification and transmission of international application to International Bureau with MM2(E)

Not allowed

5,000

 

 

Trademark Registration Process

1. Filing of trademark application with the Trademark Registrar and obtaining allotment number.

2. The Vienna Codification Process- The Registrar will apply the Vienna classification to the trademark based on figurative elements of marks.

3. Verification of the trademark application by the proper officer and issue of trademark examination report.

4. After approval, the proposed mark is published in the Trademark journal to receive objections from public (if any), or registered within 90 days (if objections not received).

5. Trademark manuscript and registration certificate prepared and the owner is given exclusive rights of the Trademark.


 

STANDARD OPERATING PROCESS OF TRADE MARKS APPLICATIONS 

 

Processing of TM Application in Trade Mark Registry

 

At present processing of TM application is done completely through TM electronic processing System and filing of application is allowed in hybrid mode, i.e.  online as well as offline.

Currently online filing has reached around 98%. Moreover, all applications received offline get digitized at its initial stage and movement of the file is done through complete electronic mode thereafter.

 

A brief description of stage wise processing in TMR

A. Pre-Examination Processing:

Filing of application: A Trade Mark Application may be filed online or offline. After digitization of offline applications, both online and offline applications are merged and proceed further for processing through the TM system.

 

VIENNA Codification: If applied mark consists of figurative elements, codification of the figurative elements is done as per VIENNA Agreement and then application moves for examination. Trade Marks applied as word per se directly proceed for examination. It is expected that all applications which may require VIENNA Codification or otherwise should be processed expeditiously and serially as per priority based on the date of filing of application.

 

B. Examination of Applications:

It may be noted that allotment of applications for the examination is done by the automated system serially on the basis of the date of filing. Examination in TMR is done in two stages, first examination report is prepared by an Examiner and then the application and examination report is forwarded to Examination Controller for approval. Examination Controller evaluates the examination report, and if found proper, approves it and thereafter the examination report is

issued to applicant. However, if some deficiency is noted by the Controller, the examination report is reverted/referred back to the concerned Examiner with suggestions for resubmission/reexamination.

 

At this stage, application may be accepted or an objection may be raised as per provisions of the TM Act. In case it is accepted, it will be published in TM Journal, else examination report will be issued to the applicant containing office objections which needs to be replied by the applicant within 30 days from the date of receipt of examination report.

 

It is expected that examination should be done expeditiously and serially as per priority based onthe date of filing of application or if any compliances are required, expeditiously and serially as per priority based the date of last compliance, if any.

 

C. Post Examination Processing:

(i) Consideration of Reply: After receipt of examination report, applicant needs to submit his reply to the office objections within one month time and if he fails to do so, the application is abandoned for want of reply.

 

If reply is submitted within the prescribed period, the same is considered by the authorized officers for the purpose. Here also, the application is allotted to the authorized officers through the TM system serially on the basis of the date of filing of the response to the examination report. At this stage, the authorized officer may accept application and the same is to be published in the TM Journal. In other cases, where the office objections cannot be waived or

found not met, a hearing opportunity is offered to the applicants in all those cases where a decision can adversely affect the interest of the applicant, a hearing opportunity is given as per law.

 

It is expected that if reply is submitted against the office objections, the same should be considered by the authorized officers expeditiously and serially as per priority based the date of filing of response to the examination report.

 

 (ii) Show-cause hearing: In case the objection/s raised by the office are not met after consideration of reply to the examination report, the application moves for show cause hearing.

In show cause hearing, the hearing notices are issued serially to the applicant/ agent through the system and allotment of the cases to the Hearing officers is also done by the TM system automatically.

The scheduling of applications for hearing should also be done serially based on the date of consideration of reply by the authorized officer.

 

D. Post Advertisement Processing:

After the acceptance of the mark, trademark is published in TM Journal. If no opposition is filed within four months from the date of publication of the trademark, the published trademark becomes eligible for registration.

 

The issuance of registration certificate is done through automated TM system. The certificate gets automatically issued if no opposition is filed within the prescribed period or where the application has not already been withdrawn by the Registrar of Trade Marks at the request of the applicant.

 

The Trade Mark once registered is valid for 10 years. The same can be renewed after every 10 years for an indefinite period by paying the prescribed fee on the prescribed form.

 

E. Opposition:

If the trademark is opposed by any third party after the publication, the same needs to be disposed of as per rules after giving proper hearing opportunity to both the parties. If the opposition is dismissed, the trade mark proceeds for registration and registration certificate is issued to the applicant. In case opposition is allowed, the application gets refused as per law.

It is expected that if any application is opposed, the same should be disposed serially based on the compliance or non-compliance by the party (i.e. Applicant or Opponent) as per provisions of the Trade Marks Act and Rules.

Procedure for disposal of the Rectification proceedings shall be similar to the opposition procedure subject to the provisions of the Trade Marks Act and Rules.

 

F. Post Registration Trade Mark Management

It is possible for the registered proprietor to record the post registration changes pertaining to proprietor name, address, address for service, assignment or registered user, etc. in the Register of Trade Marks by filing a request on the prescribed form, with the prescribed fee. In case the concerned officer examining the request raises some objections and requires some compliance on part of the applicant, the same should be processed ordinarily within 30 days from the date of compliance by the applicant. It is also a practice of Registry to send one month notice to previous registered proprietor in case any change in proprietorship by way of assignment or transmission is filed by the applicant. In this case, the request can be processed only after expiry

of one month notice period as mentioned above.

 

It is expected that the post registration request shall be examined and processed serially based on the date of filing of the request and date of compliance of the requirements, if any.

 

The renewal requests received by the Registry are processed through an automated TM system serially based on the date of filing of the request.


 

 

Well-known Trademark - Standard Operating Procedure

(Relating to processing of application filed u/r 124 of Trade Marks Rules 2017)

 

An application is filed for determination of a well-known trademark u/r 124 of the Trade Mark Rule, 2017. Standard operating procedure in this regard decided as under:

 

A. Application to be filed under 124 of the TM Rules, 2017 through online e-filing portal at official website. 

 

B. Applications filed under rule 124 for inclusion of a trademark in the list of Well-Known trademarks are processed centrally at TMR, Mumbai.

 

C. A designated section namely “Well-Known TM Section” has been set up for processing such applications as per prescribed procedure and to take timely action in the matter.

 

Designated Officer In-charge of the Well-Known TM Section will ensure that-

  • Basic Scrutiny of the applications filed under rule 124 for inclusion of a trademark in the list of well-Known trademarks shall be completed within 30 days from the date of receipt of such application.

 

  • If, in the process of scrutiny, any discrepancy / deficiency are noted by the Section-InCharge, compliance letter shall be dispatched to the applicant by post/email within seven days from the date of completion of scrutiny.

 

  • After the completion of scrutiny of the application for inclusion in the list of well known TM, if it is found eligible, the same shall be put up before the Tribunal (constituted for the purpose) for further verification and determination regarding acceptability of marks as well-known trademark.

 

  • If no objection is found in the application by the Tribunal, the mark shall be published in the TM Journal to invite public objection, if any, under rule 124 (4) of the TM Rules for final determination regarding acceptability:

Provided that if it is found by the Tribunal that the mark is already determined as a well known trademark by a competent Court or Tribunal, the same shall proceed for publication in the TM Journal directly under rule 125 (5) of the rules.

 

  • If any objection is raised by the section / tribunal in regard to the inclusion of the mark in the list of well-Known trademarks, the matter shall be set down for hearing before the Trade Marks Registry hearing officer attached with the section and a hearing notice shall be issued in consultation with the concerned hearing officer.

 

  • Hearing officer shall dispose of the matter through speaking order after giving due opportunity to the applicant.
  • Normally where no hearing is required for acceptance, a decision should be taken within three months from the date of compliance, if any. In case, it is noted that hearing is required to be offered in the matter, normally the first hearing is to be offered within six months from the date of last compliance.

 

D. If no objection received within prescribed time after the publication of the mark under rule 124 (4) or objection related proceeding decided in favour of the applicant, the trademark shall be published under rule 125 (5) in the TM Journal as a well-known Mark and shall also be included in the list in the Well-Known trademarks.

 

E. After publication, If any objection received in regard to the published mark under rule 124 (4), copy of the objection shall be forwarded to the applicant within 30 days and applicant shall be asked to submit counter statement, if any within 30 days from the date of receipt of the copy of objection as forwarded to him. After the receipt of the counter statement or after the expiry of the one month time in this regard, a hearing shall be fixed within three months from the date of submission of the counter statement or expiry of one month from the forwarding of the third party objection petition in the matter with due notice to the parties and the matter shall be disposed off after providing due opportunity of being heard to both the parties in the matter.

 

 

FAQs

What is the period of limitation for filing a suit for infringement of a trademark in India? 

3 Years from the date of infringement.

 

What can be registered as a Trademark: 

Any name, word, device, label, numerals or a combination of colors that can be represented graphically can be registered as a trademark. The trademark to be registered must also be distinctive for the services or goods for which it is proposed to be registered.

 

Applicability /juridsdiction of trademark?

The trademark registered in India is valid in India only.

 

Can foreigner/ foreign entity apply for trademark?

Yes, this is permitted.

 

Assignment/ Licensing of Trademark : 

Trademark owner can transfer his rights with respect to his trademark either by way of assignment or by licensing. In India, The Trade Marks Act, 1999 deals with assignment as well licensing of trademarks. In case of an assignment of a trademark, there is a change in the ownership of the registered brand and in case of licensing, the right in the trade mark continues to vest with the original owner but only few restricted rights to use the brand/mark are given to the third party.

 

What are the qalities of a good trademark?

A good trademark should possess the following qualities- Easy to pronounce, spell, remember, should be distinctive and should not have deceptive similarity, should not be descriptive, laudatory word/words such as best, perfect etc to be avoided.

 

Is registration of Trademark mandatory?

No, registration of a Trademark is not mandatory in India but it is advisable to do so.

 

Documents Required

Applicant details (Name, Address, Nationality, Registration certificate in case of an entity)

Power of Attorney

Affidavit (Information about the trademark)

Grounds of opposition