A notice of opposition under Section 21 of the Trade Marks Act, 1999 may be filed within four months of the publication of an application in the Trade Marks Journal. The proceedings are governed by Sections 21 of the Act and Rules 42 to 50 of the Trade Marks Rules, 2017. The matter proceeds through pleadings, evidence by affidavit, and a hearing before the Registrar.
Opposition proceedings are inter partes proceedings on the merits. The pleadings, evidence, and submissions filed in opposition become part of the record and are read in subsequent rectification and infringement proceedings. The drafting standard is that of contested litigation, not procedural compliance.
Filing of Notices of Opposition in Form TM-O under Rule 42, with grounds of opposition drafted to the standard required for contested proceedings.
Drafting of Counter-Statements in Form TM-O under Rule 44, addressing each ground of opposition with reference to evidence and supporting law.
Compilation and filing of evidence affidavits under Rule 45, including documents, exhibits, and witness statements relied upon by the opponent.
Filing of evidence affidavits in support of the application under Rule 46, with the same standard applied to the applicant's case.
Appearance and oral submissions before the Registrar under Rule 50, including reply submissions and authorities cited at the hearing stage.
Appeals from the Registrar's order to the Intellectual Property Division of the relevant High Court, including drafting of grounds of appeal and appearance.
An application accepted by the Registrar is published in the Trade Marks Journal under Section 20. Section 21(1) provides that any person may, within four months from the date of publication, give notice of opposition to the registration. The four-month period is not extendable. The notice of opposition is filed in Form TM-O under Rule 42, accompanied by the prescribed fee.
The notice of opposition states the grounds of opposition, which may include any of the absolute or relative grounds under Sections 9 and 11, prior use, lack of bona fide intention to use, and any other ground available under the Act. The opponent need not be the proprietor of a cited mark — Section 21(1) confers standing on any person.
The applicant must file a Counter-Statement in Form TM-O within two months of receipt of the notice of opposition under Rule 44(1). The Counter-Statement addresses each ground raised in the notice. Failure to file the Counter-Statement within the prescribed period results in deemed abandonment of the application under Rule 44(2).
The opponent files evidence in support of the opposition under Rule 45 within two months of receipt of the Counter-Statement, by way of affidavit. The applicant files evidence in support of the application under Rule 46 within two months of receipt of the opponent's evidence. The opponent may file evidence in reply under Rule 47 within one month of receipt of the applicant's evidence, strictly confined to matters in reply.
On completion of evidence, the Registrar appoints a hearing under Rule 50. Both parties appear and present oral submissions. The Registrar's order, communicated in writing, may allow the opposition, dismiss it, or allow registration subject to conditions or limitations under Section 18(4). The order is appealable to the Intellectual Property Division of the relevant High Court.
Opposition under Section 21 may be founded on any ground available under the Trade Marks Act, 1999. The principal grounds are absolute grounds under Section 9 — lack of distinctive character, descriptiveness, deceptiveness, customary terms in the trade — and relative grounds under Section 11 — identity or similarity with an earlier registered or pending mark for identical or similar goods or services, where there exists a likelihood of confusion.
Additional grounds include prior use of the opposed mark by the opponent, where the opponent has used the mark in India before the date of application or use claimed by the applicant, and the use gives rise to passing-off rights. Lack of bona fide intention to use under Section 18(1) is a further ground, where the application is filed without genuine intention to use the mark in trade. Bad faith filings are addressed under Section 11(10) where applicable.
Well-known mark protection under Section 11(2) extends opposition rights to proprietors of well-known marks against later applications in dissimilar classes, where the use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the well-known mark. The opponent must establish well-known status in India by reference to the factors enumerated in Section 11(6).
The notice of opposition is the foundation of the opponent's case. Grounds not pleaded in the notice cannot be argued in evidence or at the hearing. The drafting of the notice must therefore be exhaustive on the grounds available, with each ground supported by a clear factual basis. A notice that pleads grounds in the alternative, without supporting facts for each, weakens the opposition at the evidence stage.
The Counter-Statement is similarly the foundation of the applicant's defence. A bare denial of the grounds raised in the notice is insufficient. Each ground must be addressed with the legal and factual basis on which the applicant relies. Concessions made in the Counter-Statement — on similarity, on goods, on prior use — cannot be retracted at the evidence or hearing stage.
Evidence affidavits must be filed within the periods prescribed by Rules 45, 46, and 47. Late evidence is admitted only with leave of the Registrar, exercised sparingly. The evidence must be by way of affidavit, deposed to by a person with personal knowledge, and supported by documents exhibited and properly identified. Hearsay evidence and documents not exhibited to an affidavit are liable to be disregarded.
Submissions at the hearing must be confined to grounds pleaded and evidence on the record. New grounds raised at the hearing for the first time are not entertained. Authorities cited at the hearing should be Indian authorities where available, with foreign authorities relied upon only where Indian jurisprudence is silent or where the foreign authority has been adopted by Indian courts.
For an initial discussion of an opposition or counter-statement matter, the firm's Ahmedabad office may be reached by email or telephone.