Key Takeaways: - Notice of Opposition - Filing of Counterstatement - Evidence, hearing & decision

1. Opposition Proceedings under
Trademarks Act, 1999
CS Meenakshi Jayaraman

2. Research Credits
Iswariya BS

3. Legends Used
Act The Trade Marks Act, 1999
TM Trade Marks
u/s Under Section

4. Presentation Schema
Opposition of TM
Case law 1: Praveen Kumar Maakar
v. Union of India and Another
Case law 2: Maa Kamakhya Darbar
Fragrances India v. Shanti Dhoop
Karyala & Ors

5. Opposition of Trademark

6. Opposition of TM
Section 21 read with Rules 42 to 51
Hearing &
Decision
Evidence in
reply by
Opponent
Evidence in
support of
Application
Evidence in
support of
Opposition
Counter-
statement
Notice of
Opposition
Within 4 months
from the date of
advertisement /
re-
advertisement
Within 2 months
of receipt of
notice of
Opposition
Within 2 months
of receipt of
Counter
statement
Within 2 months
of receipt of
evidence in
support of
Opposition / any
intimation
regarding the
same
Within 1 month
of receipt of
evidence in
support of
Application /
any intimation
regarding the
same
After closure of
submission of
evidences
1 2 3 4 5 6

7. Notice of Opposition
Notice of Opposition shall be filed in Form TM-O within 4 months from the date of advertisement /
re-advertisement of TM registration application
Opposition notice filed for a single application of a TM containing different classes of goods and
services: Fee shall be paid in respect of each class for which the opposition is filed
Where Opposition notice is filed for a particular class / classes of a single application: Application
for remaining class / classes shall be proceeded only after filing Form TM-M for division of the
Application
For a single application for registration of a TM, if no notice of opposition is filed in a class / classes,
the application in respect of such class or classes shall, subject to section 19 (Withdrawal of
acceptance) and section 23 (1) (Opposition), proceed to registration after division of the application
in the class or classes in respect of which an opposition is pending
Fee for Form TM-O: In case of physical filings – Rs.3,000/-; In case of online filings – Rs.2,700/-
(Fee for each class opposed or counterstatement filed)

8. Form TM-O

9. Contd.

10. Contd.

11. Contents of Notice of Opposition
Application against which Opposition is entered
• Application number against which opposition is entered
• Indication of the goods or services listed in the TM application against which opposition is entered and
• Name of the Applicant for the TM
Earlier TM / earlier right on which Opposition is based
• Where opposition is based on earlier TM, Statement to that effect and an indication of the status of earlier
TM
• Application number or registration number and the filing date, including the priority date of the earlier TM,
if available
• Earlier TM which is alleged to be a well-known TM within the meaning of section 11 (2), an indication to that
effect and an indication of the country(ies) in which the earlier TM is recognised to be well known
• Earlier TM having a reputation within the meaning of section 11 (2) (b), an indication to that effect and an
indication of whether the earlier TM is registered or applied for
• a representation of the TM of the opponent and where appropriate, a description of the TM or earlier right
and
• Where the goods / services in respect of which earlier TM has been registered / applied for or in respect of
which the earlier TM is well known / has a reputation within the meaning of section 11 (2), the opponent
shall when indicating all the goods / services for which the earlier TM is protected, also indicate those goods
or services on which the opposition is based

12. Contd.
Where the Opposing party -
• Is a Proprietor of the earlier TM / of the earlier right, his name and address and an indication that he is the
proprietor of such TM / right
• Is 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
• Is a Successor in title to the registered proprietor of a TM 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 / where
this information is not available, was sent to the appropriate office and
• Has no place of business in India, the name of the opponents and his address for service in India
Grounds on which opposition is based

13. Verification
Opposition notice shall be verified at the foot by the opponent / by his duly authorised
agent
Person verifying shall state specifically by reference to the numbered paragraphs
of the opposition notice, what he verifies of his own knowledge and what he
verifies upon information received and believed to be true
Verification shall be signed by the person making it and shall state the date on which
and the place at which it was signed

14. Counterstatement
:
:
This is not required if the Applicant has
already filed counterstatement on the
basis of information in the official
website
Within 2 months of receipt, Applicant
shall send a counterstatement
If no action is taken by the opponent,
he shall be deemed to have
abandoned his opposition
• Form TM-O
Form of
Counterstatement
• Admitted facts, if any alleged in the Opposition notice by the
Applicant
• Grounds on which the Applicant relies his application
Contents of
Counterstatement
Opposition notice will be served by the
Registrar to the Applicant within 3
months of receipt
Note: Counterstatement shall also be verified in the same manner as Opposition notice

15. Case law 1

16. Case law 1
Petitioner: Praveen
Kumar Maakar
Respondent: Union
of India and
Another
Citation code
W.P (C) 1625/2017
Order dated 6th
November, 2017 by Delhi
High Court
Application for
registration was
abandoned by the
Registrar due to the
failure to produce
Counterstatement
Opposition notice was
filed u/s 21 (1) and
accordingly Registrar sent
the same to the
Petitioner
But, Petitioner denied
receipt of such notice
and hence he failed to
file Counterstatement
The petitioner’s
contention that it was
not provided an
opportunity to counter
the opposition was thus
merited
Crux of the Case
It is unsustainable to ask the Petitioner to be diligent, given the delays in TM Registry. Hence, the order
of Registrar was set aside and a further time of 8 weeks was provided to Petitioner for filing
Counterstatement

17. Evidence in support of Opposition
Copy of Counterstatement shall be sent on Form TM – O to Registrar → within 2 months from
receipt of copy of notice of opposition
Opponent shall leave with the Registrar such evidence by way of affidavit in support of his
Opposition
Alternatively, he shall intimate that he does not desire to adduce any evidence but
intends to rely on the facts stated in Opposition notice
All such evidences including exhibits, if any shall be delivered to the Applicant, and the
same shall be intimated in writing to the Registrar
If no action is taken by the Opponent within the prescribed time, he shall be deemed to have
abandoned his Opposition

18. Evidence in support of application
Within 2 months of receipt of evidence / intimation that the Opponent does not wish to produce
any evidence
Applicant shall leave with the Registrar such evidence by way of affidavit in support of his
Application
Alternatively, he shall intimate that he does not wish to produce any evidence but intends to rely
on the facts stated in Counterstatement / evidence already produced in connection to Application
All such evidences including exhibits, if any shall be delivered to the Opponent, and the same shall
be intimated in writing to the Registrar
If the Applicant takes no action within the prescribed time, he shall deemed to have abandoned
his Application

19. Evidence in reply by Opponent
Within 1 month of receipt of Applicant’s affidavit
Opponent may leave with the Registrar evidence by affidavit in reply
All evidences including exhibits, if any, shall be delivered to the
Applicant, and the same shall be intimated in writing to the Registrar

20. Further evidence
• No further evidence shall be left on either side.
• But, if Registrar thinks fit, he may give leave to the applicant or
opponent to produce any evidence upon such terms / costs
Translation of documents
• If any document referred in Opposition notice /
Counterstatement / Affidavit is in a language other than English /
Hindi
• A translated copy of the same shall be produced to the Registrar
& the other party

21. Hearing and decision
On submission of evidences
by the Parties, the Registrar
shall issue notice for hearing
Date of hearing shall be at
least 1 month after the date
of notice
Request for adjournment
can be made at least 3 days
before the date of hearing
Form for adjournment:
Form TM-M
Maximum Adjournments: 2
Days of Adjournments: Not
more than 30 days
Failure by Applicant to be
present in the Adjourned
hearing, results in
abandonment of Application
Failure by Opponent to be
present in the Adjourned
hearing, results in dismissal
of Opposition and the
application may proceed
for registration subject to
section 19
Registrar shall consider
written arguments, if
submitted by a party to the
proceeding

22. Case law 2

23. Case law 2
Applicant: Maa
Kamakhya Darbar
Fragrances India
Respondent: Shanti
Dhoop Karyala &
Ors
Citation code
W.P (C) No. 8977 of 2008
Order dated 24th
November, 2009 by Delhi
High Court
Application for
registration was
abandoned by the
Registrar due to the
petitioner’s non-
appearance for hearing
Petitioner held that they
were not aware about
the hearing date and no
notice was sent for the
same
Respondent held that
request for personal
hearing u/s 21 (4) was
not made by the
Petitioner
Principle of natural
justice had been violated
& personal hearing was
not granted
Crux of the Case
Order of Registrar was set aside and the matter was remanded back to Registrar

24. Registrar’s decision
Registrar shall give an opportunity of being heard to the parties, if they so desire
After hearing, Registrar shall decide whether and subject to what conditions /
limitations, if any, the registration shall be permitted
Further, he may take into account a ground of objection whether relied upon by
the Opponent or not
Decision of the Registrar shall be communicated to the parties in writing at the
address given for service
Registrar may on request, permit correction of any error / amendment in the Opposition
notice / Counterstatement

25. Security for Costs
Where the Opponent
giving Opposition notice /
Applicant sending
Counterstatement after
receipt of a copy of notice
neither resides nor carries
on business in India
Registrar may require him
to give security for the
costs of proceedings before
him
in default of such security
being duly given, Registrar
may treat the opposition /
application as abandoned
Security for costs will be
fixed by the Registrar as he
considers proper & the
same may be enhanced at
any stage in the opposition
proceedings

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