Who Can File Trademark Opposition

Any concerned person who is directly or indirectly affected due to the registered trademark can file the notice of opposition to the applicant concerned according to section 21 of Trademark Act, 1999

The trademark opposition can be filed by “any person” who can be a customer, a purchaser, a seller, competitor, or member of the public who is likely to use the goods. The person can serve the notice of opposition to the applicant applying for registration of a trademark whether the person is having or not having any commercial or personal interest in the matter.

Note: The person filing a notice of opposition may or may not be a registered trademark owner.

Essential requirements for filing Notice of Opposition:

The Notice of Opposition should be given in the prescribed form, upon the payment of a requisite fee.

  • It should be filed to appropriate trademark registry.
  • The application number, an indication of the goods or services, name of the applicant against which opposition is entered;
  • If the opposition is filed on account of an existing trademark application or registered trademark, then the application or registration number of the earlier - mark should be mentioned.
  • If the opposition is based on a mark which is alleged to be a well-known trademark, then an indication to that effect in which place the earlier mark is recognized to be well known should be mentioned.

 Details of the opposing party

  • If the opposition is entered by the proprietor relating to an earlier mark or of the earlier right, then his name, address and an indication that he is the proprietor of such mark or right shall be clearly mentioned.
  • If the opposition is entered by the successor in title of the registered proprietor of a trademark who is yet to be registered as new proprietor, then 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 shall be clearly mentioned.
  • If the opposing party has no place of business in India, then the opponents name and his address for service in India shall be clearly mentioned.

Grounds of Opposition

  • The opponent can set up any ground which may support his opposition against the registration of the trademark under any of the provisions of the Trade Marks Act.
  • The followings are the list of possible grounds for opposition to the registration.                  
  • That the trademark advertised is not registrable in that it is neither distinctive nor capable of distinguishing or that it does not satisfy the requirements of the Act.
  • The essential part of the said trademark is a word in ordinary use, descriptive of the character or quality of the goods and the applicant is not entitled to acquire an exclusive right therein by registration.
  • That the trademark is devoid of distinctive character, that is to say, it is not being able to distinguish the goods or services of one person from another person.
  • That the trademark is of such a nature as to deceive the public or cause confusion;
  •  That the trademark contains or comprises of any matter which is likely to hurt the religious sentiments of any person or class of the citizens of India;
  • That the trademark comprises or contains scandalous or obscene or irrelevant matter;
  • That the use of the mark of the applicant would be an infringement of the opponent’s registration, which could be restrained by the Court.

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