Once a trademark application is filed, it is examined by the Trade Marks Office (TMO) and an Examination Report is issued. In case, any objections are raised in the said report, a reply to the examination report is to be filed. The Trade Mark Registry may either accept the trademark or in the alternative, may appoint a show-cause hearing for arguments or refuse the trademark. Once the trademark application is accepted, it proceeds towards advertisement in the Trade Mark Journal.
According to Section 21 of the Trademark Act, 1999 upon advertisement of a trademark, the application is open to opposition by any third party for a period of four months from the date of publication. If the trademark application successfully surpasses the said opposition period without encountering any opposition, it may proceed towards registration.
On the other hand, in case an opposition to an application is filed by any third party, they may do so in writing citing the reasons or grounds of opposition, which is called the notice of opposition. The grounds which are usually taken by the Opponent are identity/ similarity between the trademarks, prior registration and/or applications or prior use of a trademark by the Opponent.
Further, according to Rule 44 of the Trademark Rules, the Applicant of the opposed trademark is required to file a counter statement within two months of being served with the copy of the notice of opposition by the TMO. The said time period is non extendible. In case the Applicant does not file a counter statement in the stipulated time period, its trademark is deemed to be abandoned and an order thereon is passed by the Registrar.
In case the Applicant files its counter statement within the stipulated time period, the Opponent files evidence in support of its opposition within the non-extendible time period of two months of being served with the counter statement by the Applicant, according to Rule 45 of the Trademark Rules. The said time period is also non extendible. Similarly, according to Rule 46 of the Trademark Rules, the Applicant also files evidence in support of its Application within the non-extendible time period of two months of receiving the evidence as filed by the Opponent. If the Opponent fails to file the evidence within the stipulated time, the opposition is deemed abandoned and the application proceeds to registration. However, if the Opponent files its evidence in support of opposition and the Applicant fails to file its evidence in support of application, the application is deemed abandoned.
Further, according to Rule 47, the Opponent on receiving the evidence from the Applicant (under Rule 46) can file evidence in reply (rebuttal evidence) within a period of one month (non-extendible). No further evidence shall be left on either side and the evidence stage will be closed.
- Thereafter the matter will be heard by the Ld. Registrar and it shall be decided if the opposed trademark is capable to proceed towards registration. The parties could be directed to submit written submissions and compilation of case laws being relied on by each party. In case the Ld. Registrar decides to rule in favour of the Applicant, the trademark will proceed towards registered and the TMO will issue a registration certificate. However, if the Ld. Registrar rules the decision in favour of the Opponent, then the trademark application will be refused and the application shall not proceed towards registration.