Learn how to oppose a trademark in India under the Trade Marks Act. Step-by-step process, cost, timeline, and legal grounds explained for individuals, businesses & IP firms.

What is Opposition in Trademark?

Trademark opposition is a legal remedy available under the Trade Marks Act, 1999 that allows any aggrieved party to stop the registration of a trademark.

Unlike rectification (post-registration), opposition is a pre-registration safeguard that ensures only genuine, distinctive, and non-conflicting marks are registered.

Opposition proceedings play a crucial role in:

• Preventing confusingly similar marks from entering the register.

• Protecting well-known marks from misuse.

• Safeguarding prior users and business goodwill.

• Ensuring market clarity and avoiding consumer confusion.

Who Can Oppose a Trademark?

As per Section 21 of the Trade Marks Act, 1999, “any person” can oppose a trademark. This includes:

• Registered proprietors of existing marks.

• Prior users (even if not registered).

• Competitors who may suffer damage.

• Consumer groups/public bodies/ any person protecting consumers from deception etc.

Grounds of Opposition

• Absolute Grounds (Section 9):

  • Lack of distinctiveness.

  • Descriptive or generic words.

  • Customary terms in trade.

  • Marks against morality, law, or likely to deceive.

• Relative Grounds (Section 11):

  1. Identical or deceptively similar to an earlier trademark.

  2. Likelihood of confusion among consumers.

  3. Identical/similar to a well-known trademark.

• Section 13 prohibits the registration of certain marks.

  Names of chemical elements; or  International Non-Proprietary Names (INNs) (as declared by WHO) assigned to pharmaceutical substances, or words deceptively similar to them.

Step 1: Publication in the Trademark Journal

• • Once the Examiner accepts a trademark application—either outright or subject to conditions—it is advertised/published in the Trademark Journal under Section 20 of the Trade Marks Act, 1999.

  • The publication serves as public notice to all third parties.

  • From the date of publication, any third party has 4 months to oppose the registration (Rule 42, Trade Marks Rules, 2017).

  • If no opposition is filed within this period, the mark proceeds toward registration.

Step 2: Filing of Notice of Opposition (Form TM-O)

• • A party opposing the trademark (the Opponent) must file Form TM-O along with the prescribed fee.

  • The notice must contain:

    • Details of the Opponent (name, address, legal status, etc.)

    • Details of the Applicant and the opposed mark

    • Grounds of Opposition (e.g., similarity with earlier mark, bad faith, descriptiveness, prohibition under Sections 9, 11, 13, etc.)

    • Prayer requesting refusal of the application.

  • Grounds should be clearly drafted, as vague or insufficient pleadings can weaken the case.

  • Power of Authority must be attached along it

Step 3: Counter-Statement by Applicant (Rule 44)

• Upon receipt of the opposition, the Registry serves a copy of the opposition notice to the Applicant.

• The Applicant must file a counter-statement (Form TM-O) within 2 months of receiving the notice.

• Failure to file within the prescribed time → the application is deemed abandoned (Section 21(2)).

• The counter-statement must specifically address each ground raised by the Opponent.

Step 4: Evidence Stage

• The evidence stage is divided into three parts:

  (a) Opponent’s Evidence in Support of Opposition (Rule 45)

  • Must be filed within 2 months of receiving the counter-statement.

  • Can be in the form of:

    • Affidavits

    • Documentary evidence (sales invoices, advertisements, market reports, registrations, etc.)

  • If the Opponent chooses not to file evidence, they may rely on the facts stated in the opposition itself (by notifying the Registrar).

  (b) Applicant’s Evidence in Support of Application (Rule 46)

  • Must be filed within 2 months of receiving Opponent’s evidence.

  • Usually includes:

    • Proof of honest adoption and use of the mark

    • Sales and marketing evidence

    • Affidavits from customers/distributors

  • If evidence is not filed, the application is at risk, though the Applicant can rely on facts already asserted.

  (c) Opponent’s Reply Evidence (Rule 47)

  • Must be filed within 1 month of receiving Applicant’s evidence.

  • Allows the Opponent to address and rebut the Applicant’s claims.

Step 5: Hearing

• • Once pleadings and evidence are complete, the Registrar issues a notice of hearing to both parties.

  • Hearings can be conducted physically at the Trademark Registry or virtually via Cisco Webex.

  • During the hearing:

    • Both parties argue their case orally.

    • Reliance is placed on pleadings, evidence, and relevant judicial precedents.

    • Legal arguments typically cover likelihood of confusion, prior use, distinctiveness, or bad faith.

  • The Registrar then records the matter for decision.

Step 6: Registrar’s Order

• • After considering pleadings, evidence, and oral submissions, the Registrar passes a reasoned order.

  • Possible outcomes:

    • Opposition allowed → application is refused.

    • Opposition dismissed → trademark proceeds to registration.

    • Partial allowance → modifications imposed (limiting specification, disclaimers, etc.).

Step 7: Appeal

• Aggrieved party may appeal before the High Court.

Example of Opposed Application

• Trademark Application Absolute Biosciences
• ABSOLUTE BIOSCIENCES (Applicant Mark) V.  ABSOLUT (Opponent mark)