Corresponding Law – Scope and Applicability

This section corresponds to Section 21 of the Trade and Merchandise Marks Act, 1958.With regard to notice of opposition to registration the Provisions of (old) section 21 of the (old) Act are specific. The general provisions explained  in (old) section 101 will not be applicable on the principle. Opposition defines that any person may, within three months from the date of the advertisement of an application for trademark registration or within that further period, does not increase the time as one month, as the Registrar, on application made to him in the prescribed manner and on payment of the specified fee, allows, give notice in writing in the specified manner to the Registrar, of opposition to the trademark registration.

opposition

Procedure under this Section

The opposition under sub-section (1) shall be in Form T.M.5 and shall be given within three months from the date of advertisement in the Trade Marks Journal [Rule 47(1)].The notice should contain the grounds of opposition, the particulars of the advertisement in the Trademarks Journal, and the class of goods under which the trademark us advertised [Rule 47(1)].It shall be given in existing in three copies and one copy will be sent by the Registrar to the applicant [Sub-section(2)].

Filing an opposition – Procedure

On receipt of notice which is from the Registrar, the applicant shall file a counter-statement, which shall be in duplicate, on Form Trade Mark 6 (Rule 48).One copy shall be sent to the opponent [Sub-Section (3)] and on receipt thereof the opponent shall within such further two months either leave with the Registrar that the evidence by the proper source of affidavit as he may want to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce in support of his opposition. He may produce to the applicant copies of any evidence that he appears with the Registrar. Time for opposition may be extended by a further period not increasing the one month in the aggregate on an application made to the Registrar with the specified fee. When the Assistant Registrar extended the time he was not making a decision in the sense in which that word is used. He was merely extending the time by one month under Section 21(1). It didn’t cause any changes in the rights and liabilities of the parties.

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A decision means a concluded choice of opinion. It is an authoritative answer to the question raised before a court. It is the settlement of a controversy submitted to it. Decision implies the exercise of a judicial determination as the final and definite the result of examining a question. An order granting extension of time is not of such a nature. It is not such a decision as to give the aggrieved person a right to appeal. It is such a procedural order in aid of proceedings. If the opponent fails to put in his evidence as per rule 48,he shall be deemed to have abandoned his opposition unless the Registrar otherwise directs.

Opposition carried on by the Evidence

Within two months from the receipt by the applicant of the copies of affidavit in support of the opposition or of the intimation, that the opponent does not want to counting the number as any evidence in support of his opposition, the applicant shall leave with the Registrar that the evidence by way of affidavit as he wants to count the number for in support of his application and shall deliver to the opponent copies thereof or shall notify to the Registrar and the opponent that he does not want to adduce the evidence but intends to rely on the facts stated in the counter-statement and/or on the evidence already carried by him in connection with the application in question. In case the applicants  based on any evidence already carried by him in connection with the application, he shall produce to the opponent copies thereof. This evidence shall be confined to matters strictly in reply. 

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Where the trademark is already exhibits to affidavits filed in an opposition a copy or impression  shall be send to the other party on his request and at his expense or, if such  impressions cannot conveniently be furnished, the originals shall be carried out with the Registrar in order that they may be open for inspection. Where a original document in any of the language other than the common Universal language as English is preferred to in the notice of opposition, counter-statement or an affidavit filed in an opposition, an attested translation thereof in English shall be furnished in duplicate.

Upon the completion of the evidence , the Registrar shall give notice to the parties of a date when he will hear the arguments in the case. Such kind of appointment shall be for a date of minimum of one month after the notice given, unless the parties consent to a shorter notice. Within fourteen days from the receipt of the notice, any party who does not so notify the Registrar on Form T.M – 7. The decision of the Registrar shall be notify to the parties in writing. The security for the costs which the Registrar may require under Sub-Section (6) of section 21, may be fixed at any amount which may be consider proper and such amount may be further enhanced by him at any stage in the opposition proceedings for the required unique trademark registration.

Any person – Opposition of Trademark Registration

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The opposition to the registration of a trademark may be made by “Any person” and not only by a ‘person aggrieved’. The reason is that public interests are also to be considered and the point of view of the public heard. Where a person fails to enter his opposition or, having failed, fails to follow it up he may nevertheless seek his remedy under (old) section 56 in the event of opposition not fructifying. Section 21(1) of the Act lays down the limitation during which a person may give notice of opposition to the registration. It also lays down the starting point of the period of limitation which is the date of advertisement or re-advertisement of an application for registration. Re-advertisement  can be order under section 20 of the Act wherein the Registrar wherein the Registrar has been given a discretion to cause an application to be advertised again. The omission of the word ‘notification’ from the section 21(1) of the Act clearly shows that it was not meant to case a person to give a notice of opposition to trademark registration. The amendments are corrections are usually of simple character and are of no practical significance to the person who intends to oppose. It is in these circumstances that Registrar, has no exercise his discretion to re-advertise or to notify the correction or amendment.

Effect of Withdrawal application

Where an applicant or trademark registration withdraws his application on the opposition of the advertised mark of another person, the person who opposed, cannot on that ground claim proprietary right for himself over the Trademark. The words “Any person” referred to above need to be only a prior registered trademark owner. Even a customer, a purchaser, or a member of the public likely to use the goods may object to the trademark registration of a trademark in respect of such goods on the ground of possible deception or confusion. Deception or confusion is a matter of public interest which is an important concern of the Trade Mark Law.

Conditions and Limitations of Opposition

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The words “Conditions” and “Limitations” have no reference to the power of amendment to the trademark. The words “Conditions” and “Limitations” have the things like types of user of the trademark . The only power the registrar has of allowing amendment of a trademark proposed  for trademark registration is before or at the time of acceptance of the trademark for advertisement for purposes of trademark registration and also after acceptance provided the applicants makes application for and asks for such amendment for the opposition. When an application for the Trademark registration has been accepted, it has to be advertised as mentioned in the Section 20 of this Act. Upon an application for trademark registration have been made, and the advertisements were issued and a notice of opposition was received. Without caring the opposition and hearing the parties, the trademark registration was effected. Under such circumstances, the provisions of Section 23(1)(b) applies and one of the pre-conditions is that the opposition should be decided . In other words before an application for trademark registration is granted, the opposition must be considered and rejected. In case an opposition had been filed but by, mistake or inadvertence, it was not considered, so that it cannot be said that the opposition had been decided for the applicant. Thus, the registration was granted although the pre-condition  had been satisfied .

Sub-section (6) – Notice of Opposition

This section provides for security for costs being required where the applicant or the opponent, after giving counter – statement or notice of opposition neither resides nor carries on business in India. Section 97(b) empowers the Registrar to order reasonable costs.

Failure to file opposition

Failure to file opposition under this section does not bar the filing of a petition under section 56 of the old Act.

Opposition to Registration Mark

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Notice of opposition to trademark registration and counter-statement are like plaint and written statement. The notice of opposition is to be filed within the period prescribed under the provisions of Section 21 of the Trade Marks Act, 1999.This Act being a special statue the provisions of the Limitation Act,1963 would not be applicable, and consequently, notice of opposition filed beyond the prescribed time cannot be accepted by the Registrar of Trade Marks. Where the applicant for condonation of delay in filling counter-statement is made showing sufficient cause of delay, the Registry should be directed to take counter-statement on record. If Rule 47(6)of the Trade Marks rules,2002 as it stands now has to be accepted, then it confers power to extend time only if the application is made before the expiry of the period of six months. Such a rule will be clearly defines in section 21(1) of the Trade Marks Act, 1999. Thus, it should be struck down as null and void. Delay in filing notice of opposition was due to delay in receipt of trademark journal in the office of attorney. It was held that the expression ” from the date of advertisement” has to be considered from the date of knowledge. The applicant objected to the appearance of the foreign company’s attorney before the Tribunal on the ground that the foreign company’s attorney cannot appear until and unless he gives security for costs of proceedings ,if not, opposition may be treated as abandoned. The opposition proceedings have been legally fled in favor of the foreign company by its attorney, in the case of default, such security shall be recovered from the said foreign company through its legally authorized representative.

Extension of time

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Request on Form TM-44 was made for extension of time for filing application under section 21(1) of the Trade Marks Act,1999. Section 21(1) of the said Act read with the rule 47(1) of the Trade Marks  Rules, 2002 empowers the Registrar to extend time even though it has expired. Where the delay occurs merely on account of an inadvertent error in advertising, the appellant application under section 20(2) of the said Act should be allowed. The error occurred was clearly a Rule of procedure and any narrow interpretation for not allowing the application would shake the judicial conscience and adversely affect the cause of justice and law.

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