TRADEMARK HEARING, OBJECTION AND OPPOSITION

What is Trademark Hearing, Objection And Opposition?

Trademark Hearing - Trademark hearing is nothing but an appearance before the registrar of trademarks either in person or through trademark agent or trademark attorney for removing the objections raised under examination report issued after Trademark Registration application. Trademark hearing happens if the registrar does not get satisfied with the reply filed against the objection raised in the examination report in the process of trademark registration. If unsatisfied with the trademark reply filed, the trademark status will get changed to “Ready for show cause hearing” and in few months hearing notice will be issued inside which the date and time of the hearing will be mentioned.

Trademark Objection -Oftentimes, during the trademark registration process, the Trademark Registrar raises objections on the intended trademark if it violates rules and laws of trademark registration. It could be due to several reasons like similarity with an existing trademark; offensive to a particular religion; absence of a distinct design; etc. In the event of a trademark objection, a comprehensive reply needs to be filed within a month, from the date of issuance of the objection.

Trademark Opposition -A trademark opposition is filed by a third-party against the registration of your Trademark. When an opponent files an opposition, your trademark status will reflect as 'Opposed'. Trademark Opposition in India comes at a stage after the registrar has approved the trademark application on the distinctiveness factor and publishes the trademark in the journal for the third-party opposition. Anyone can oppose the published trademark within a period of 3 months which can be extended for a month more (3+1); beginning from the day it was first published.

Procedure for Trademark Hearing-

1. Representation of case- As per the time and date mentioned in the hearing notice, the person or his agent/trademark attorney has to be present before the authority with the requisite documents and submissions. No dress code has been specified for the hearing but it has to be formal.

2. Decision- After reaching to the concerned trademark officer, the case has to be put up along with your submissions, documentary evidences and relevant case laws, After putting up your complete case to the officer, he will either give his decision at that moment only (accepted or abandoned) or he will hold his decision for few days.

Procedure for Trademark Objection –

1. Analyzing Trademark Objection- The first step involves analyzing and studying the objection carefully, as any ambiguity in understanding can lead to incorrect filing of Trademark Objection Response.

2. Drafting Of Trademark Objection Response- The next step is to draft a trademark reply which should include the following:
i) A proper answer to the objection raised with supporting rule of law and precedents and judgments supporting the case.
ii) The differences between the conflicting mark and the mark of the applicant.
iii) Other supporting documents and evidence that validates the response.
iv) An affidavit stating the usage of the trademark in the applicant’s website and social media channels; advertisement in the media; publicity material; availability of trademarked products on e-commerce sites, etc. along with the documentary proof for the same.
v) The response draft is then filed online on the Trademark e-filing portal.

3. Trademark Hearing- If the response is accepted, the application will be processed further for registration and advertisement in the Trademark Journal. If it is not accepted, or there are additional clarifications sought by the Trademark Examiner, there would be a trademark hearing scheduled and the same will be notified with a notice.

4. Publication In The Trademark Journal- If the outcome at the hearing is positive, the mark will be accepted and will be ordered to be published in the Trademark Journal. In the event of a negative outcome, the Refusal Order will be passed, explaining the reason for the refusal. The applicant still would have the option to appeal the order by filing a review petition within 30 days from the date of the Refusal Order mentioning the grounds on which the order must be reviewed.

5. Registration- Once your trademark is published in the Trademark Journal, it will be open to scrutiny for a period of four months. If no third-party oppositions are filed within that period the mark will then proceed towards registration, and the Registration Certification is issued. If an objection is filed the opposition proceedings will take place as per the prescribed rules of the law.

Procedure for Trademark Opposition –

1. Notice of Opposition: Any person can file a notice of opposition on a trademark that is advertised in the trademark journal within 4 months from the date of advertisement.

2. Counter Statement: Within 2 months of the receipt of the notice of opposition, the Applicant can file a counter statement. If the Counter Statement is not filed within 2 months, the Applicant is deemed to have abandoned the Trademark application.

3. Evidence in Support of Opposition: If the Applicant files the Counter-Statement, within 2 months (extendable by one month) of the receipt of the counter-statement the Opponent must file evidence, by way of an Affidavit. The Opponent also has an option to write to the Registrar stating that he does not desire to file evidence but instead intends to rely on the facts stated in the Notice of Opposition. Form TM-O is filed online.

4. Evidence in Support of Application: Upon receipt of the evidence of the Opponent, even the Applicant is provided with 2 months (extendable by 1 month) for filing Evidence in Support of Application, if any.

5. Evidence in reply: Additionally the Opponent is given 1 month (extendable by 1 month) to file Evidence in response to the Applicant's evidence.

6. Hearing: Based on the notice of opposition, counter statement, and evidences filed, the Registrar shall call for a hearing. Within fourteen days of receipt of the notice of hearing, the parties are required to notify the Registrar of their intention to appear in the matter. Finally, the matter is heard by the Registrar and decided upon merits.

7. Registration or rejection: If the registrar decides in favour of the applicant, the trademark will be registered and registration certificate will be issued. If the registrar decides in favour of the opponent, then the trademark application shall be rejected.

Documents Required for Trademark Hearing

1. Power of Attorney- in Form TM-48.

2. Letter of authorization- In Order to authorize the attorney or any person for attending the hearing an authorization letter shall be given by the applicant.

3. Affidavit of Usage- The date of usage plays a crucial role in getting your trademark registered. Thus, the applicant emphasizes the usage date of a trademark filed by filling a usage affidavit for it. In the affidavit prepared the applicant must give the complete details about the usage of the brand name.

4. Additional Submissions- For reference make sure to keep the short notes of the important things like case laws and examples related to your case and evidence that makes your claim strong and prove the capability of your trademark getting registered.

5. Proof of Business

6. Examination Report

7. Hearing Notice

Documents Required for Trademark Objection

1. Power of Attorney- in Form TM-48.

2. Letter of authorization- In Order to authorize the attorney or any person for attending the hearing an authorization letter shall be given by the applicant.

3. Affidavit of Usage- The date of usage plays a crucial role in getting your trademark registered. Thus, the applicant emphasizes the usage date of a trademark filed by filling a usage affidavit for it. In the affidavit prepared the applicant must give the complete details about the usage of the brand name.

4. Examination report.

5. Trademark hearing notice..

6. Documentary proof of Trademark in commercial use.

Documents Required for Trademark Opposition

1. Name, Address, Nationality, etc of the applicant. Body corporates/other categories need to provide with registration certificate.

2. Power of Attorney in Form TM-48.

3. Affidavit with the basic information about the trademark and its user date and proof of use.

4. Detailed information about the mark against which the opposition is to be filed, i.e. name and basic grounds for filing the opposition.