INTRODUCTION
Filing a trademark application does not guarantee registration in India. One of the most significant challenges that can arise is the filing of an opposition under Section 21 of the Trade Marks Act, 1999. Once a trademark is published in the Trademarks Journal, any interested third party can oppose its registration. The applicant must then respond and defend their application by complying with the procedural rules specified in Rules 42 to 48 of the Trade Marks Rules, 2017. If the applicant navigates this process successfully and demonstrates merit, the trademark may still proceed to registration despite the opposition.

WHEN A TRADEMARK IS OPPOSED

Once the trademark is advertised in the Trademarks Journal, any individual can initiate opposition proceedings by filing a Notice of Opposition within four months from the date of advertisement or re-advertisement, as per Rule 42(1). This must be done using Form TM-O along with the applicable fee. If the application involves multiple classes, the opposition must mention the exact class being opposed, and separate fees must be paid for each.

In line with Rule 42, the Registrar must usually serve the opposition notice to the applicant within three months. However, if the applicant has already accessed the notice through the online portal and submits a counterstatement accordingly, the need for official service is removed.

GROUNDS OF OPPOSITION

Oppositions may be raised under both absolute and relative grounds as laid out under Sections 9 and 11 of the Trade Marks Act, 1999. These grounds include:

1. Absence of Distinctiveness: The mark lacks the ability to distinguish one’s goods or services from others.
2. Descriptive Nature: The mark merely describes characteristics such as kind, quality, or intended use.
3. Generic Nature: The mark comprises terms or symbols commonly used in the relevant trade.
4. Prohibited Elements: The mark contains content likely to offend religious sentiments, national symbols, or obscene matter.
5. Risk of Confusion: The mark is similar or identical to an existing one dealing in comparable goods/services.
6. Reputation Dilution: The mark is identical or similar to a well-known trademark, potentially harming its distinctiveness or goodwill.

Rule 43 sets out the mandatory elements that a Notice of Opposition must contain:

• Application number and opposed class.
• Details of the earlier mark relied upon (registration/application number, well-known status, or reputation).
• A description or representation of the opponent’s mark.
• Information about the opponent (e.g., whether they are the owner, successor, or licensee).
• A sworn verification of facts through affidavit.

These ensure that both the Registrar and applicant understand the legal and factual reasons behind the opposition.

FILING OF COUNTER-STATEMENT

After the applicant receives the opposition notice, they have a two-month window to file a counterstatement under Rule 44. The counterstatement must address the allegations, accepting or denying them, and should include any factual responses or explanations.

The counterstatement must also meet the verification requirements specified in Rule 43(2) to 43(4). If no response is submitted within two months, the application is treated as abandoned. Once received, the Registrar must forward the counterstatement to the opponent within two months.

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EVIDENCE BY BOTH PARTIES

Upon completion of pleadings, the matter moves into the evidence stage, governed by Rules 45 to 48:

1. Opponent’s Evidence – Rule 45: Within two months of receiving the counterstatement, the opponent must submit evidence via affidavit or declare that they are relying solely on the Notice of Opposition. If no action is taken within this period, the opposition is deemed to have been abandoned.
2. Applicant’s Evidence – Rule 46: The applicant, upon receiving the opponent’s evidence or waiver, has two months to file evidence in support of their application. Alternatively, they may rely on the counterstatement. Failure to act results in the application being considered abandoned.
3. Reply Evidence by Opponent – Rule 47: Within one month of receiving the applicant’s evidence, the opponent may submit rebuttal evidence. This concludes the evidence exchange.
4. Further Evidence – Rule 48: No additional evidence is permitted unless the Registrar grants permission subject to fair conditions.

Copies of all evidence must be served to the opposing party and acknowledged in writing to the Registrar. Any non-English or non-Hindi document must be accompanied by a certified translation.

HEARING BEFORE THE REGISTRAR

Once all evidence has been submitted, the Registrar issues a hearing notice, setting a date not less than one month from the notice [Rule 50].

Either party can request an adjournment by filing Form TM-M, though only two adjournments are permitted per party, each not exceeding 30 days. If a party fails to appear, their case may be dismissed, allowing the mark to proceed or the opposition to succeed.

Written arguments can be submitted and are useful in reinforcing the party’s position.

The Registrar’s decision is provided in writing and communicated to both parties.

TIPS TO GET YOUR OPPOSITION CLEARED

To effectively defend a trademark application against opposition, applicants should:

• Promptly file a well-drafted counterstatement.
• Demonstrate that the mark is distinctive and not deceptively similar to existing ones.
• Adhere strictly to all deadlines for filing affidavits and evidence.
• Maintain accurate proof of prior use, if applicable.
• Cite precedents that support the legitimate and honest adoption of the mark.
• Minimize adjournment requests to maintain credibility before the Registrar.

Strategic emphasis should be placed on consumer perception, originality, and the absence of dishonest intent to persuade the Registrar.

CONCLUSION
Opposition serves as an essential control in India’s trademark registration system, providing an opportunity for valid objections before statutory rights are granted. Nevertheless, with a well-informed approach to the procedural and legal aspects outlined in Rules 42 to 48 of the Trade Marks Rules, 2017, applicants can overcome oppositions effectively. Balancing technical compliance with strong factual and legal justification remains key to securing trademark registration despite opposition.

Author - Bhavpreet Singh Soni

Co Author -SHABADPREET KAUR