Notice of opposition

notice

  • A notice of opposition to the trademark registration under sub-section (1) of section 21, with such particulars as specified in rule 48, shall be given in duplicate in form TM-5 within four months from the date of publication in the Trademarks Journal in which the application for registration of trademark was advertised or re-advertised.
  • Where a notice of opposition has been filed in respect of a single application for the registration of a trademark, it shall bear the fee in respect of each class in relation to which the opposition is filed in Form TM-5.
  • Where an notice of opposition is filed only for a particular class in accordance with a single application made under sub-section (2) of section 18, the application for remaining class or classes shall not carry the registration until a request in Form TM-53.
  • Where in respect of a single application for the registration of a trademark, no notice of opposition is filed in a class or classes, the application in respect of such class or classes shall subject to section 19 and sub-section 1 of section 23 proceed to registration after the division of the application in class or classes in respect of which an opposition is pending.
  • All notices of opposition to the registration of a trademark for goods or services received in respect of a particular Journal shall be notified in the journal. Provided that nothing in this sub-rule shall be construed to presume that all remaining trademarks from particular journal so notified shall automatically proceed to the trademark registration.
  • A duplicate copy of notice of opposition shall be normally served by the Registrar within three months of the receipt of the same by the appropriate office to the applicants.

Requirements of notice of opposition

notice

The notice of Opposition shall contain-

  • in respect of the application against which opposition is entered.
  • the application number of the application against which opposition is entered.
  • an indication of the goods or services listed in the trademark application against which opposition is entered; and
  • the name of the applicant for the trademark.

In respect of the earlier mark or the earlier right on which the opposition is based-

  • Where the application is based on an earlier mark, a statement to that effect and an indication of the statue of the earlier mark;
  • Where available, the application number  or registration number and the filing date, including the priority date of the earlier mark;
  • Where the opposition is based on an earlier mark which is alleged to be a well-known trademark within the meaning of the sub-section(2) of section 11 of the Act, an indication to that effect and an indication of the country or countries in which the earlier mark is recognised to be well-known;
  • Where 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 of whether the earlier mark is registered or applied for;
  • A representation of the trademark of the opponent and where appropriate, a description of the mark or earlier right; and
  • Where the goods or services in respect of which earlier mark has been registered or applied for or in respect of which the earlier mark is well known within the meaning of 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.

In respect of the opposing party-

notice

  • Where the opposition is entered by the proprietor of the earlier mark or of the earlier right, his name and address and an indication that he is the proprietor of such mark or right;
  • Where 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 authorised to enter the opposition;
  • Where the opposition is entered by the successor in the title to the registered proprietor of 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 registration of the new proprietor was received by the appropriate office or, where this information is not available , was send to the appropriate office or, where this information is not available, was sent to the appropriate office; and
  • Where the opposing party has no place of business in India, the name of the opponents and his address for service in India.
  • The grounds on which the opposition is based.
  • A notice of opposition shall be verified at the foot by the opponent or by some other person who is acquainted with the facts of the case.
  • The person verifying shall mention particularly by reference to the numbered paragraphs of the notice of opposition, what he verifies of his own knowledge and what he verifies upon the information received and believed to be true.
  • The verification shall be signed by the particular individual making it and shall mention the date on which and the place at which it was signed.

Counter-statement

notice

  • The counter statement required by sub-section (2) of section 21 shall be sent in the triplicate in Form TM-6 within three months from the receipt by the applicant of the copy of the notice of opposition from the Registrar and shall set out what facts, if any, alleged in the notice of the opposition, are admitted by the applicant. A copy of the counter-statement shall be ordinarily served by the registrar to the opponent within two months from the date of receipt of the same.
  • The counter-statement shall be verified in the same manner as the notice of opposition as mentioned in sub-rule(e) of rule 48.

Evidence in support of opposition

  • Within two months from services on him of a copy of the counter-statement or within such further period not exceeding one month in the aggregate thereafter as the registrar may on respect allow, the opponent shall either leave with the Registrar, such evidence by the way of affidavit as he may desire to adduce in support of his opposition but intends to rely on the facts stated in the notice of the opposition .If an opponent take no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.
  • An application for the extension of the period of one month mentioned in the sub-rule(1) shall be made in Form TM-56 accompanied by the prescribed fee before the expiry of the period of two months mentioned therein.

Evidence in support of application

notice

  • Within two months or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow, the applicant shall leave with the Registrar and shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any support or evidence but intends to rely on the fact stated in the counter-statement and or on the evidence already left by him in connection with the application in question. In case the applicant relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies thereto.
  • An application for the extension of one month mentioned in sub-rule (1) shall be made in Form TM-56 accompanied by the prescribed fee before the expiry of the period of two months mentioned therein.

 Evidence in reply by opponent

Within one month from the receipt by the opponent of the copies of the applicant’s affidavit or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request in Form TM-56 allow, the opponent may leave with the Registrar evidence by affidavit in reply and shall deliver to the applicant copies thereof. This evidence shall be confined to matters strictly in reply.

Further Evidence

notice

No further evidence shall be left on either side, but in any proceedings before the Registrar, he may at any time, if he thinks fit, give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit.

Exhibits

Where there are exhibits to affidavits filed in an opposition a copy or impression of each exhibit shall be sent to the other party on his request and at his expense, or, if such copies or impression cannot conveniently be furnished, the originals shall be left with the Registrar in order that they may be open to inspection. The original exhibits shall be produced at the hearing unless the Registrar otherwise directs.

Translation of documents

Where a document is in a language other than Hindi or English and is referred to in the notice of the opposition , counter-statement or an affidavit filed in an opposition proceeding, as attested translation thereof in Hindi or English shall be furnished in duplicate.

Hearing and decision

notice

  • Upon completion of the evidence , the Registrar shall give notice to the parties of the first date of hearing. Such notice shall be ordinarily given within three months of completion of evidence. The date of hearing shall be for a date at least one month after the date of the first notice. Within fourteen days from the receipt of the first notice, any party who intends to appear shall so notify the Registrar in Form TM-7. Any party who does not so notify the registrar within the time as aforesaid may be treated as not desiring to be heard and the Registrar may act accordingly in the matter.
  • If sufficient cause for adjournment is not shown by either of the parties the registrar may proceed with the matter forthwith.
  • If the applicant is not present at the adjourned date of hearing and has not notified his intention to attend the hearing in Form TM-7, the application may be treated as abandoned.
  • If the opponent is not present at the adjourned date of hearing and has not notified his intention to attend the hearing in Form TM-7, the opposition may be dismissed for want of prosecution and the application may proceed to trademark registration subject to Section 19.
  • In every case of adjournment the Registrar shall fix a day for further hearing of the case and shall make such order as to cost occasioned by the adjournment or such higher costs as the Registrar deems fit.
  • The fact that the agent or advocate on record of a party is engaged in another court, shall not be a ground for adjournment.
  • Where illness of legal practitioner or an agent or his inability to conduct the case for any reason is put forward as a ground for adjournment , the Registrar may refuse to grant the adjournment unless he is satisfied that the legal practitioner or an agent, as the case may be , could not have registered another agent or legal practitioner in time.
  • The Registrar shall take on record within arguments if submitted by a party in the proceedings.

Security costs

The security for costs which the Registrar may require under sub-section (6) of section 21 may be fixed at any amount which he may consider proper, and such amount may be further  enhanced by him at any stage in the opposition  proceedings.

Notice of Non-completion of Registration

notice

The notice which the registrar is required by sub-section (3) of section 23 to give to an applicant, shall be sent in Form O-1 to the address of the principal place of business in India or if he has no principal place of business in India at the address for service in India stated in the application but if the applicant has authorised an agent for the purpose of the application, the notice shall be send to the agent and a duplicate thereof to the applicant. The notice shall mention twenty one days time from the date thereof or such further time not increasing one month as the Registrar may allow on a request made in the specified Form TM-56 for completion of trademark registration.

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