Trademark Opposition Counter-Statement

 

Counter-Statement/Reply to Trademark opposition means that a third party has raised opposition against the trademark you are trying to register. Now you have to respond to the registrar with a pointwise reply in support of your trademark's authenticity.

Any person could raise a Trademark Opposition after publishing in the Trademark Journal for various reasons. The reason possibly could be regarding proprietorship of the Trademark, pre-existence of the Trademark, being descriptive in nature, or could be anything specified under the Trade Marks Act of 1999. Replying or Counter-Statement for Trademark Opposition is must in case someone opposed the trademark published in the Newspaper Journal.

But before moving to the procedure of replying trademark opposition, a prior understanding of the grounds, eligibility and documents required for replying trademark opposition is helpful.

 

 

Benefits of Trademark Opposition

 

Some of you might think, how getting opposed or opposing something is beneficial for you. How could this process of publication in Trademark Journal for registration benefit us? Let us answer your queries about this.

1. Publication in Journal increases the popularity of a trademark in the target audience. We can say that publication in a Journal is an advertisement to the consumers or general public about the brand and the goods & services it provides.
2. This gives the registered trademark owners a fair chance to oppose the similar or identical trademarks, which could create problems in the near future.
3. This also creates a sense of clarity among the general public who might be confused due to similar trademarks.

 

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Grounds of Trademark Opposition

 

Anyone can file opposition against a trademark, but they should know the grounds on which trademark opposition can be raised. There are several grounds on which trademark Opposition can be filed:

 ⇒ If the trademark is similar or identical to an earlier or existing registered trademark

 ⇒ If the mark is devoid of distinctive character

 ⇒ If the mark is descriptive in nature

 ⇒ If the application for the trademark is made with bad faith

 ⇒ If the mark is customary in the current language or the established practices of business

 ⇒ If the trademark is likely to deceive the public or cause confusion

 ⇒ If the mark is contrary to the law or is prevented by law

 ⇒ If the trademark is prohibited under the Emblem and Names Act, 1950

 ⇒ If the mark contains matters that are likely to hurt religious feelings of any class or section of people

It is advisable to seek help of legal experts for drafting and filing Counter-statement for Trademark Opposition. Our legal experts at Professional Utilities can help you with reply to Trademark Opposition.

 

Documents required for Replying Trademark Opposition

 

Details of applicant

 ⇒ Name

 ⇒ Nationality

Power of attorney (It allows the attorney to take any action on behalf of an applicant.)

 

 

Procedure for Counter-statement of Trademark Opposition

 

Filing a counter-statement means that someone has already raised opposition against the trademark, and now you have to reply to them legally. The registrar had sent you the notice of trademark opposition.

  1. Evidence phase

1.  A counter-statement must be filed within two months or 60 days from the date of the receipt by the Applicant of notice             of opposition from the Registrar. The Applicant for trademark registration must have to file a counter-statement within 2             months from the date of notice of opposition. If they fail to do so then the trademark could be refused. The Counter-                 statement is first sent to the Registrar and if all the formalities are fulfilled then it is then sent to the individual/company             who had filed for the opposition.
2. Now after receiving counter-statement, a time period of two months is given to the individual/company for providing evidence in support of their opposition in the form of an affidavit to strengthen the case, if they wish so.The opposing individual can choose not to file evidence and rely on the facts that they stated in the notice of opposition. But, they need to inform the registrar about whatever decision they take otherwise the opposition will be tagged as refused.
3. If the opposing individual/company provides evidence to the counter-statement then, the applicant has to file evidence in support of their counter-statement with the duration of two months of receiving evidence from the opposition through the registrar. The Applicant also has the option to waive his right to submit any evidence.
4. If the applicant provides evidence then the opposing individual/company has the option to file any additional evidence in support of their opposition. Opposing individuals/companies have to reply or file evidence within one month of receiving evidence of counter-statement by the applicant of trademark

  2. Hearing phase

After the completion of the evidence phase, a hearing is conducted and both the parties (applicant for trademark and opposing individual/company) are notified at least one month prior to the hearing. The decision for accepting or rejecting a trademark is to be made by the Registrar only.