1. TRADE MARK OPPOSITION PROCEDURE FILMA JOHN TRADE MARK DEPARTMENT

2. WHAT IS A TRADE MARK? A Trade mark is a visual representation attached to the goods for the purpose of indicating their trade origin

3. STEPS INVOLVED IN REGISTRATION OF TRADE MARK Application for registration Examination by Registry Hearing the Applicant Publication of the Mark in the Journal Opposition (if any) Registration

4. TRADE MARK OPPOSITION IN INDIA One step in the process in registering a trademark on the Principal Trade Mark Register of the Trade Mark Office, India is passing through the phase termed PUBLICATION FOR OPPOSITION

5. STATUTORY PROVISIONS Section 21 of the Trade Marks Act, 1999 and rules 47-57 of the Trade Marks Rules, 2002 contain the provisions relating to opposition proceedings.

6. WHO MAY OPPOSE When a Trade mark is advertised in the Trade mark Journal, any person can oppose the registration of the Trade mark within 3 months from the date of the Trade mark journal made available to the public. Normally the following persons can oppose the registration of Trademark: 1. The owner of an earlier Trade mark application or registration having a similar Trade mark for similar goods. 2. A person who has used the same or a similar Trade mark prior to the client, but who has not sought registration of the Trade mark

8. A “trust” per se not represented by any of its trustees cannot file oppositionEmjas Trust V. Windsor Food Co. (1991) PTC 10 (TMR)

10. Descriptive in nature

12. Contains matters that are likely to hurt religious feelings of any class or section of the citizens of India

13. Prohibited under the Emblem and Names (Prevention of Improper Use) Act, 1950

14. Exclusively of the shape of the goods

15. Identical with/similar to an earlier trademark

16. Malafide/bad faith

17. Prevented by virtue of the law of passing off

18. Contrary to any law for the time being in force

20. On receipt of the Counter Statement, the opponent files their evidence by way of an Affidavit supported by documentary evidence of the use to the Trade mark Registry and also sends one set of his evidence to the Applicants simultaneously. On receipt of the documents from the opponents, the Applicants file their evidence by way of an Affidavit and documentary evidence of the use to the Trade mark Registry and sends one complete set to the opponents. 7. On receipt of the documents from the Applicants, the opponents file their rebuttal evidence within one month. 8. After completion of these formalities, the Trade mark Registry fixes a date and time for addressing arguments by both the parties through their attorneys

21. PROCESS FLOW ADVERTISEMENT OF THE TRADE MARK IN THE TRADE MARK JOURNAL 3 + 1 month NOTICE OF OPPOSITION 2 + 1 month COUNTER-STATEMENT 2 + 1 month EVIDENCE IN SUPPORT OF OPPOSITION 2 + 1 month EVIDENCE IN SUPPORT OF APPLICATION 1 + 1 month REPLY EVIDENCE FURTHER EVIDENCE HEARING

23. Should be filed in Form TM-5 in triplicate

26. Should be filed by the applicant in Form TM-6 in triplicate

27. Should be filed with prescribed fee within 2 months from the receipt of the copy of the notice of opposition

28. The counter-statement should set out what facts, if any, alleged in the notice of opposition are admitted by the applicant

29. It should be verified in the same manner as the notice of opposition

30. If not filed within the prescribed time the application will be deemed to be abandoned

32. The opponent may file evidence in support of opposition by way of an affidavit or may rely on the facts stated in the notice of opposition

33. The opponent should intimate the registrar and the applicant in writing that he does not desire to adduce evidence in support of opposition but intends to rely on the facts stated in the notice of opposition

34. The opponent should deliver to the applicant copies of any evidence that he leaves with the Registrar and intimate to the registrar in writing of such delivery

36. The applicant may file evidence in support of application by way of an affidavit or may rely on the facts stated in the counter-statement

37. The applicant should intimate to the registrar and the opponent in writing that he does not desire to adduce evidence in support of application but intends to rely on the facts stated in the counter- statement

38. The applicant should deliver to the opponent copies of any evidence that he leaves with the registrar and intimate to the registrar in writing of such delivery

42. Parties should file Form TM-7 intimating their intention to attend the hearing within 14 days from the receipt of the first notice

43. If any party who does not so notify the Registrar will be treated as not desiring to be heard and the Registrar may act accordingly in the matter

44. If sufficient cause for the adjournment for the hearing is not shown the Registrar may proceed with the matter forth with

46. In every case of adjournment the Registrar shall fix a date for further hearing of the case and shall make such order as to cost occasioned by the adjournment or such higher cost as the Registrar deems fit

47. If illness or inability to conduct the case is put forward as a ground for adjournment the Registrar may refuse to grant adjournment unless he is satisfied that the party could not have engaged another agent or legal practitioner in time

48. A party may submit written arguments

53. APPEAL (Sec 91of the Trade Marks Act, 1999) Every order or decision of the Registrar under Section 21 of the Act is appealable to the Appellate Board Exception – Interlocutory orders involving procedural matters Ratan V. Asst. Registrar AIR 1997 Del 93 at 95

54. Thank You