Trademark Opposition and Rectification

The Manual of Trademarks Tribunal comprises certain Rules which are always read with the Trademarks Act, 1999. The Rule for trademark opposition and rectification by its proprietor through application to the registrar’s office is provided in a detailed view under the Trademark Act, 1999 of the Tribunal Section.

Let’s discuss about the Trademark Opposition

Section 21 of the Trademark Act, 1999 clearly states that the Trademark opposition is an objection submitted by a third party against the registration of a Trademark within four months of the Trademark advertisement. Only a natural or legal person is eligible individuals to file for the opposition with the Trademark Registry.

What are the Grounds to file the Trademark opposition

The following are some of the grounds for filing an opposition:

1. The mark lacks any distinctive features as per the relative and absolute grounds under Sections 11 and 9 of the Trademarks Act, 1999.
2. The mark has the potential to deceive or cause confusion in the general public, i.e., already been utilised and owned by another entity.
3. The mark contains material that may offend the religious sentiments of any class or group of people.
4. Any mark stipulated under The Emblem and Names Act, 1950.

Steps to file the Trademark opposition 

Step 1: Anyone who wants to file a notice must include important details such as the opposite concerning party’s information, application’s details and the grounds for opposition. The notice must be submitted within four months from the date of mark’s publication/advertisement of an application for registration in the Trademarks Journal.^[1] After the Registry approves the notice, a copy of the same will be sent to the applicant in question. The applicant has two months from the date of receipt of the notification to file a counter statement. On the account of failing to file on time, the Registry may abandon the trademark application.

Step 2: After getting a copy of the counterstatement, the opponent must file evidence in the form of an affidavit within two months of receiving the counterstatement. If the opponent fails to file the same, the objection will be considered abandoned.^[2]

The applicant also has two months to file evidence with the Registrar.^[3] On request, the Registrar may extend the filing period by one month at their discretion. Suppose the applicant does not desire to present any proof and instead relies on facts already disclosed in the counter-statement. In that case, the Registrar and the opponent should be notified in writing.

Step 3: The Tribunal generates a hearing notice after the evidence stage is completed, indicating the day on which the parties will be heard. The Registrar must send this notification at least one month before the first hearing date. Whoever plans to present must tell the Registrar within 14 days of receiving such notification by filing the appropriate form.^[4] If a side fails to do so, it may be assumed that they do not want to be heard, and the case may proceed accordingly. After hearing both the opponent and the applicant, the Registrar must decide whether the trademark application in question should be denied or the opposition should be dismissed.

Now let’s discuss what is Trademark rectification in the Register

This Rule helps an aggrieved individual to file for the mark’s removal, revocation, or rectification from the registry of the trademark.^[5] Here, the harmed party is specifically known as ‘persons aggrieved’, i.e., individuals whose marks are under a threat of getting damaged in the near future. Thus, people who are under the threat of substantial damage are eligible to file for rectification. Similarly, in the case when there is the threat of misconception and misidentification of a collective mark in a public domain, the owner can file for rectification and removal of that trademark.

What are the reasons to file the rectification application in the Trademark 

An application for Rectification can be submitted for the following reasons as mentioned under Section 47 of the Act:

1. That the trademark was registered without any prior bona fide reason and intention to utilise the same. Later, not using the mark for three months before the date of application is sufficient ground.
2. The mark is “deceptively similar” to an earlier registered trademark, and there is a lack of reasonable justification for the same.
3. The registered trademark was not utilised for a constant period of five years since the day of the registration as per Section 47(1) of the Act.
4. The Proprietor/owner of the mark is no longer considered to be competitive due to the mark’s futile presence in the market.

Steps to file the application for the Trademark rectification 

Step 1: An application has to be filed and submitted under various sections of the Act, such as S. 47, 57, 68 or 77 read with Rule 92 of the Trade Marks Rules 2002. The application shall include the applicant’s nature of interest, reasonable justifications for removal and rectification, and the relief they seek for.

Step 2: The owner shall send a counter-statement to the Trademark Registry within two months (can extend up to one month) from the receipt of the copy of the application for rectification.^[6] This must specify the grounds on which the application was sent for rectification.

Step 3: At the end, the Register’s office may dispose of the application after the hearing is done. The procedure for scheduling and conducting hearings, adjourning hearings, and disposing of rectification applications, as described previously in the opposition proceeding, shall be followed in this step too.

Conclusion: Henceforth, the rule for trademark opposition and rectification is a viable mechanism for a trademark proprietor or owner. Therefore, all the registered trademark users shall keep a close eye on their utilisation of trademarks and take necessary action at the appropriate moment to avoid misrepresentation and deception against their marks.

References: 

^[1] Section 21(1)

^[2] Section 21 (2) of the Trademarks Act 1999.

^[3] Rule 51 of the Trade Marks Rules 2002.

^[4] Rule 56 (1) of the Trade Marks Rules 2002.

^[5] Section 57(1) & (2).

^[6] Rule 93 of the Trade Marks Rules 2002.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.