Procedure for Opposition to Registration of Trademark

opposition

This article deals with the procedure for opposition to registration of a trademark. This is substantial reproduction of the provisions contained in section 21 and 22(b) of the Trade and Merchandise Marks Act, 1958. Sub- clause (6) provides for payment of security for costs in the case of persons who do not reside or carry on business in India.

By Trademarks (Amendment) Act, 2010 (40 of 2010), sub-section (1) of section 21 has been amended as follows.

Comments

This section, which is a substantial reproduction of the of the provisions contained in section 21 and 22(b) of the repealed Trade and Merchandise Marks Act, 1958, deals with the procedure for opposition to the trademark registration. Sub-section (6) provides for payment of security for costs in the case of persons who do not reside or carry on business in India.

TRIPS Agreement

India is a member signatory to the TRIPS agreement. Under Article 15(5), members shall publish each trademark either before it is registered or promptly after it is registered and shall afford a reasonable opportunity for petitions to cancel the registration. In addition, members may afford an opportunity for registration of a trademark to be opposed. This Paris convention, of which India is a member, requires the publication of the reproduction of registered trademarks wide Article 12(2)(b). The Paris convention is silent in regard to the procedure for opposition.

Who may oppose?

The statute allows any person to oppose an application of registration, whether he has or he has not a personal interest. The law in this respect is to be distinguished from proceedings in respect of rectification of Register and cancellation or variation of trademark registration, where an application can filled in the prescribed manner only by “any person aggrieved”. No such requirement exists in the case of opposition. The term “any person” in section 21 came to be interpreted and it was held that “any person” need not 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 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 a trademark law. The question of an opponent does not generally arise, even though the opposition may be based on business rivalry or for other extraneous reasons. Where the opponent is a firm of unregistered partnership, it would appear that section 69 of the partnership Act could be looked into at the threshold. Where the plaintiff admitted that the firm was not a registered firm on the date of filing of the suit, the suit was dismissed by the Delhi High Court as being hit by section 69 of Partnership Act. The procedure for opposition is prescribed as part of the laws of several countries, more to protect the interest of the public. The proceedings for opposition, being in the nature of an important adjunct to the examination procedure before trademark registration, the Registrar looks only at the merits of the opposition rather than a motive of the opponent. As was held by the Chancery Division in Pharmacia GBBH’s TM application “the opponent represents not only his own interest but also, to some substantial extent, that of the public. The opposition must, none of less, be started within a strict and generally non-extendable time limit because, regardless of the public interest  in having the issues decided, the person otherwise entitled to the benefit of the grant or registration which is opposed should not be subject to an unreasonable delay in the decision of the opposition”.

Power of Attorney

Under section 145, any act which is required to be done before the Registrar by any person, may be done by a legal practitioner, a registered trademarks agent or by his employee, when such person is duly authorized in the prescribed manner”. Rule 19(1) prescribes the form TM-M for the purpose. Where a notice of opposition is filled by a legal practitioner on behalf of his client, without a power of attorney, it is necessary to file it subsequently at the earliest. In Accurate Engineers versus Alps Engineering Co., failure to do so even when necessary communication was issued by the Registry, the opposition was treated as and a review petition was also dismissed.

Period within which opposition to be filed under earlier law

For filing notice of opposition, the earlier provision is section 21(1) stipulated a period of “three months from the date of advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar , on application made to him in the prescribed manner and on payment of the prescribed fee, allows”. The three months period was computed from the date of the dispatch of the journal containing the advertisement to the subscribers and not the date printed on the journal.

With development of internet facilities, the Registrar also published the journal on the official website. Such electronic publication is treated as the advertisement of the application for trademark registration under sub-section (1) of section 20. The rule makes it clear that the date of publication is the date as indicated in the appropriate journal number. The journal is no longer published in paper form. When the publication is in the electronic form and on the official website, the determination of the date of publication becomes easier, as compared to the days when the paper publication was dispatched by the post. Rule 47(1) of the old Rules of 2002, also related the communication of the period for filing notice of opposition the date on which the journal was make available to the public. Another cumbersome procedure under the earlier law was that it provided for possibility to make an application for an extension of the period of 3 months for filling notice of opposition under section 21(1). For this purpose, a request was required to be made on Form TM 44b accompanied by the prescribed fee, before  the expiry of the period of 3 months, as prescribed in the rule. Such period of extension was not to exceed one month in the aggregate. The question under what circumstances, the period for filing opposition was extendable, led to conflicting views in the Registry itself. Section 131, which empowers the Registrar to grant extension of time, limits the power for extending the time for doing any act – not being a time expressly provided in the Act. Since the period prescribed in section 21 for filling notice of opposition was 3 months, which was extendable by one month on a request made to that effect, it was obvious that there was no room for extending the overall period of 4 months. The discretion given to the Registrar given to the Registrar, however, led to conflicting decisions.

In Monster Munch TM application for extension of time by one day on the ground that irregularity has occurred because of the failure by the Trademarks Registry to inform that the fax number had ceased to be operational, was refused. It is significant note that the section 131 is explicit in empowering Registrar to allow extension of time prescribed only in the rules.

Time limit for filing opposition

By Trademarks Act, 2010 (40 of 2010), sub-section (1) of section 21 has been amended as follows.

The effect of the amendments is-

  • The time limit under the Act for filing notice of opposition is now uniformly fixed at 4 months.
  • The discretion of Registrar to grant extension of time of 1 month, as was possible under old law, has been removed.
  • The newly prescribed period of 4 months is not extendable under any circumstances.

When mark not clearly represented in Journal advertisement

In the CAEOLA TM, it was held by Mr. Justice Laddie “Once the advertisement had been placed in the journal the timetable prescribed by the 1994 rules started to run, In particular, a three month window of opportunity opened to third parties to oppose the application. Whatever the current printing limitations may be within the Registry, I accept Mr. Arnold’s submission that when the Act and the Rules refer to a representation of the mark, they must be taken to mean a representation which clearly depicts the essential features which registration is sought. There has not yet been a proper advertisement of this mark and no opposition period has yet started to run”. Application for an order of mandamus to the Registrar to proceed to register the mark on the basis of the first advertisement refused.

In case of Asoka Dresses versus Bonn’s shirts, the Delhi High court held that if an advertisement gives incomplete or incorrect information in respect of the particulars of the trademark advertised a prospective opponent is deprived of the opportunity of getting full information regarding the trademark and for filing an effective opposition. Therefore, such an advertisement amounts to misrepresentation and it is required to be cancelled. With the cancellation of the advertisement before acceptance of the application is necessarily to be put to the stage of rule 39, which is the stage prior to the acceptance. This is the stage when upon hearing the parties the registrar will take a decision s to whether the application has to be advertised in the Trademarks Journal either as accepted or before accordance.

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