Contents of the notice of Opposition:
The contents notice of opposition shall contain following particulars
a) In respect of an application contents against which opposition is entered
- application number against which opposition is entered;
- Indication of goods and services listed in the trademark application against which the opposition is entered;
- name of the applicant for the trademark
b) In respect of the earlier mark or the earlier right on which the opposition is based
- If the opposition is based on an earlier mark, a statement to that effect and an indication of the status of the earlier mark;
- If contents available, the application number or the registration number and the filing date, including the priority date of the earlier mark which is alleged to be a well-known mark within the meaning of sub-section (2) of Section 11 of the Act, an indication to that effect and an indication of the country/countries in which the earlier mark is well-known;
- If the opposition is based on an earlier trademark having a reputation within the meaning of paragraph (b) of sub-clause (2) of section 11 of the Act, an indication to that effect and an indication whether the earlier mark is registered or applied for;
- Representation of the contents of the mark of the opponent and where appropriate, a description of the mark or earlier right.
- Where the goods or services in respect of contents of the notice which has been registered or applied for or in respect of which the earlier mark is well-known within the meaning sub-section (2) of section 11 or has a reputation within the meaning of that section, the opponent shall, when indicating all the goods or services for which the earlier mark is protected, also indicate those goods or services on which the opposition is based.
c) In respect of opposing party
- Where the opposition is entered by the proprietor of the earlier mark or of the earlier right, his name or address and an indication that he is the proprietor of such mark or right;
- Where the opposition is entered by a licensee, not being a registered user, the name of the licensee and his address and an indication that he has been authorized to enter the opposition;
- Where opposition is entered by the successor in title to the registered proprietor of a trademark who has not yet been registered as new proprietor, an indication to that effect, the name and address of the opposing party and an indication of the date on which the application for trademark registration of the new proprietor was received by the appropriate office or, where this information in not available was sent to the appropriate office.
- Where opposition is entered on the basis of an earlier right by a person who is not the proprietor of that right, the name of the person and his address and an indication that he is entitled under the relevant national law to exercise that right.
- Where the opposing party has no place of business in India, the name of the opponent and his address for service in India.
d) The grounds on which the opposition is based
As any person may file the notice of trademark opposition, the opponent can set up any ground to support his opposition, but such grounds should be based on special provision of the law. Apart from complying with the general requirements about the contents of a notice of opposition as prescribed in Rule 43, the following could be good grounds, if established. However, grounds based on section 11(2) and (3) are available only to the proprietor of earlier trademark. The pleadings in the notice of the opposition should cover all aspects. If the pleadings do not identify the right issues, the issues the parties propose to argue about, then it cannot be expected that with any consistency the right evidence will be adduced at the hearing. The pleadings are supposed to identify the issues to which evidence will be directed. If the pleadings do not properly identify the issues someone, sooner or later, is going to be taken by surprise. In this case , where the notice of opposition did not refer even the issue of copyright, the register remarked that on the basis of the notice of the opposition and not even satisfied that there is legitimate claim to copyright; it has certainly not raised in the pleadings; the opposition under the section 17(1) fails accordingly “. On the appeal the Chancery Division allowed amendment of the notice of the opposition and introduction of additional evidence.
With reference to section 9(1), on one or more grounds such as
- Trademark applied for is devoid of distinctive character and is not capable of distinguishing the goods or services of the applicant or is not a trademark capable of being represented graphically;
- Mark contents exclusively of a mark or indication which serves in trade to designate the kind, quality, quantity, intended purposes, value, geographical origin or the time of production of the goods or rendering of service or other characteristic of the goods or services, as the case may be
- The mark applied for contents exclusively of a mark or indication which is or has become customary in the current language or in the established practice of the trade.
With reference to section 9(2) , on one or more grounds such as
- The mark is of such nature as to deceive the public or cause confusion;
- The mark contents or compromises matter which hurts are likely to hurts the religious susceptibilities of any class or section of the citizens in India;
- The use of the mark is prohibited under the Emblems Act and therefore its trademark registration.
- The mark compromises and contains scandalous or obscene matter;
With reference to section 9(3) , on one or more grounds such as-
- the mark alleged to be constituted by the shape of goods results from the nature of the goods themselves; or
- the mark alleged to be constituted by the shape of the goods is necessary to obtain the technical result;
- the mark alleged to be constituted by the shape of the goods gives substantial value to the goods.
With reference to Section 11(1), on the ground such as-
The mark proposed for Trademark Registration is identical with or similar to an earlier mark registered for identical goods/services and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trademark. It is impermissible to collectively group together several earlier trademarks in the proprietorship of the opponent. The section speaks of Trademark Registration being refused on the basis of an earlier trademark. Thus where the opponent relies on proprietorship of more than one earlier trademark, the registrability of the applicant’s mark must be considered against each of the opponent’s earliest trademark separately. The determination of likelihood of confusion involves a global appreciation of the visual, oral and conceptual similarities of the marks in question based on the overall impression given by the marks bearing in minds their distinctive and dominant components. The average customers does not proceed to analysis its various details and therefore it is permissible to look at the individual elements that make up the marks in order to arrive at what their overall impression on the relevant public might be.
With reference to section 11(2), on the ground such as,
The mark proposed for trademark registration is identical with or similar to the earlier trademark and though it is to be registered for goods or services which are not similar to those covered by the earlier trademark registered in the name of a different proprietor, the mark shall not be registered because the earlier trademark is a well-known trademark in India and the use of the proposed trademark is without due cause and would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier well-known trademark.
With reference to Section 11(3), on the ground that-
- Trademark Registration of the proposed mark is liable to be prevented by the virtue of any law, in particular the law of passing off, protecting an unregistered trademark used in the course of a trade; or
- Trademark Registration of the proposed mark will be an infringement of the copyright which protects the mark relied upon the opponent.
With reference to Section 11(10) , on one or more grounds as such as-
The trademark relied on by the opponent is a well-known trademark which the law requires to be protected against identical or similar trademarks. By virtue of the facts stated in the notice of trademark opposition, the applicant has not come with clean hands in seeking trademark registration of the mark and as such, the contents of application is to be regarded as made in “bad faith”.
With reference to contents of section 12, on the ground that in the circumstances, the proposed mark is not fit for trademark registration on the ground of honest concurrent use or other circumstances. With section 13, on the ground that, the trademark sought to be registered comprises of a word which is commonly used, an accepted name of the chemical element or a chemical compound or is a generic name declared by the WHO as an International non-proprietary name or which is deceptively similar to such name and registration of such mark would offend against section 13 and section 57 of the Act.
With reference to Section 18, on or more grounds such as-
- The Applicant’s claim to proprietorship of the mark is false, as the opponents are the owners of the trademark , being the prior adopters and users of a trademark in respect of same/similar goods/services.
- The user claimed by the applicant is false;
- there is no intention on the part of the applicant that the mark applied for is to be used by him in respect of contents of all or some of the goods or services .
Other possible cs of Opposition
- The registration of a trademark is not applied for in good faith- section 33.
- The trademark registration of the trademark will interfere with the use of his own name or that of his place of business, or of the name of the place of business of any of his predecessors in business – Section 35.
- That the trademark contents of the name or description of an article or substance falling within the scope of Clause (b) of section 36(2).
- That the mark is common to the trade and the applicant is not entitled to its exclusive use by trademark registration.
- The applicant was formally in the opponent’s employment and the application is in fraud of the opponent’s rights to the mark.
- That the trademark belonged to a partnership under which the applicant and the opponent carried on business, that under the terms of the partnership, the trademark and the goodwill attached to it belonged to the opponent on dissolution of partnership, and that the partnership having been dissolved the applicant is not entitled to register the mark in his own name.
- The opponent is joint owner of the trademark and that the application for trademark registration should have been made in the names of the applicant and of the opponent as joint proprietors – section 24.
- That the applicant has not used and has no intention of using the mark in the course of trade in relation to the goods/services for which he seeks to register it.
- That the mark contents of a false trade description with respect to nature and composition of the article to which the mark is applied by the applicant and its use is likely to cause deception.
- That the proposed use of the mark is not use as a trademark to indicate the trade origin of the goods.
- That the trademark belongs to the opponent and its trademark registration by the applicant will be in violation of section 146 of the Act.
Having regard to the facts and the circumstances of the case, the opponent may seek the exercise of the discretion of the Registrar either to refuse the trademark application or to allow it only with such contents of amendments, conditions or limitations which, if any, as may be suggested. Where an application for trademark registration is opposed on the ground that the claimant is not the proprietor of the trademark, and that opposition is made by someone who does not himself claim to be the proprietor, the Registrar must investigate and decide , adopting an objective test, whether the claimant is the true proprietor, and only register him if he is satisfied that he is; it is not sufficient that the claim is bonafide. If the opponent fails to prove prior adoption and use of mark, opposition may fail.
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