Why do we need a reply for trademark opposition?
During the Trademark registration process, the trademark has been filed to the authorities for examination. After resolving the Trademark objections, if any, by the examiner, the authority then publishes the to-be registered trademark in the Trademark Journal. This is done to let people know that a potential brand symbol will be registered.
Suppose any party, be it an individual or a business entity, has any objection to the trademark’s font style, size, phonetic value, pictorial representation, colour coding, etc. In that case, they can file for a trademark opposition against the said trademark. This is done to ensure the to-be-registered trademark doesn’t resemble an existing trademark.
An application for trademark opposition is filed for opposing a trademark advertised in the journal by the trademark registry. The application filing and opposition process regulations are defined under the Trademark Act of 1999.
The already registered trademark party will file a lawsuit by issuing a notice of opposition to the Trademark Trial and Appeal Board and the defendant. The notice of opposition trademark must file within 3 months of trademark publication unless an extension request.
Pre-conditions for Opposition
What makes a complainant eligible for replying to/for Trademark Opposition filing?
In trademark registration filing, the application can deal with from two perspectives- first, the plaintiff, the one opposing the publish trademark, and second the defendant, the register trademark owner. These entities have their own set of eligibility criteria.
As a trademark registration applicant, you must have all the evidence to back up your case, including the facts you gathered while conducting a Trademark search and resolving Trademark objection raised by the authority. But you must be aware of the reply to trademark opposition format.
Meanwhile to oppose a published trademark, you must have enough case studies to deal with existing brand names in India.
Entities that can become opponents to the trademark registration request mention below:
- Individual
- Registered Company
- Co-operative or Welfare Society
- Trusts
- Partnership firms
- LLPs
- Previous users of the brand name.
- The current proprietor of the trademark
Multiple entities can file for the same issue with the authority or for trademark opposition filing by issuing separate notices.
Documents Required to file a/defend against a Trademark Opposition
What documents must attach with the notice of opposition trademark or the reply against the notice?
Documents required for trademark Opposition:
Authorization Documents:
- Trademark opposition filing form 5 or the Trademark registration application.
- The counter-statement in response to the raised opposition.
- Gathered evidence to support the Notice of Opposition or the Counter-Statement: The evidence provided must be thorough; the evidence might seem insignificant.
Documents required as a Plaintiff:
- Notice issued to oppose the published trademark
- Gathered evidence(s) to support the made claim.
Documents required as a Defendant:
- Counter statement in reply to notice written in an official format
- Gathered evidence(s) to defend the made claim.
Trademark Opposition filing process
The complete trademark opposition filing procedure is as follows:
- File the notice: The accuser must fill out and deliver the notice to the registered owner during the months of advertisement.
- File the counter-statement: After receiving the notice, the registered trademark owner must file a counter statement within 2 months of issuance of notice.
Points to Ponder:
- Firstly, The trademark application will be abandon if the to-be-register trademark owner doesn’t file for a counter-statement.
- Secondly, The trademark authorities will assess both statements and ask for evidence.
- After that, The accuser will then submit the evidence to support their stand within two months. Post this period, the trademark application will be accept.
- Then, The defendant must provide evidence to support the uniqueness of it within two months of opposition notice reception, failing which the application will be abandon.
- At the last, After analyzing the evidence of both plaintiff and the defendant, the trademark authority will convene a hearing. Finally, after hearing both sides of the argument, the court will take its final call.
Also Read: Pvt Ltd Company to Public Ltd company: Conversion Process
Get Ready for Trademark Opposition with Registrationwala
Since we have discussed both sides of the process in detail, you can connect with the Registrationwala at our website if you want to avail such services. We are experts in the trademark registration filing process with the needed pool of IPR experts at our disposal. These experts can help the plaintiff prepare his legal notice and the required evidence and then make the case to file for it. We can also help the defendant prepare a counter-statement in response to the opposition notice, gather the required evidence, and make your case for defending your trademark in the court’s hearing
Consequently, Connect with us to avail yourself of the required trademark services.
