The document discusses the process for opposing trademark registration under the Trade Marks Act of 1999. It covers topics such as the timeline for filing an opposition, required forms and fees, procedures for evidence submission, hearings, and decisions. The opposition process involves a notice of opposition, counter-statement by the applicant, potential evidence submissions by both parties, and a final hearing where the registrar makes a decision. Extensions to timelines may be granted in some cases.

2.  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.
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4.  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)].
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5.  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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6.  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.
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7.  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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8.  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.
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10.  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.
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.
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11.  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.
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12.  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.
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13.  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 .
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14.  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 favour 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.
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15.  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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