Reply to Trademark Opposition

  • No Hidden Charges
  • Lowest Price Guarantee
  • Quick and Hassle-Free Process
  • Free Expert Assistance for Lifetime
Google Icon
Google Reviews

4.1

Get Free Consultation

Trademark Opposition Counter-Statement

A counter-statement or reply to a trademark opposition is necessary when a third party has raised objections against the trademark you're attempting to register. In this response, you provide a point-by-point reply to the Registrar, defending the authenticity and legitimacy of your trademark.

Indeed, individuals can file a trademark opposition for various reasons, such as concerns about trademark ownership, pre-existing trademarks, descriptiveness, or any grounds specified in the Trade Marks Act of 1999. It's crucial to submit a reply or counter-statement when someone opposes a trademark published in the Trademark Journal, as this is a necessary step to address and resolve the opposition.

Before delving into the process of responding to a trademark opposition, it's beneficial to have a clear understanding of the grounds, eligibility criteria, and the necessary documents required for preparing a reply to a trademark opposition.

Benefits of Trademark Opposition

You might be wondering about the advantages of either facing opposition or opposing something during the trademark registration process. How does the publication in the Trademark Journal, as part of the registration process, benefit us? Allow us to address your questions on this matter.

  • Publication in the journal serves to enhance the visibility of a trademark within the target audience. It essentially functions as a form of advertisement to consumers and the general public, creating awareness about the brand and the products or services it offers.
  • Furthermore, this process provides registered trademark owners with a fair opportunity to contest similar or identical trademarks that may potentially lead to issues in the future.
  • Additionally, this practice fosters clarity among the general public, alleviating potential confusion caused by similar trademarks.

Grounds of Trademark Opposition

Indeed, while anyone can file a trademark opposition, it's important to understand the various grounds on which such opposition can be raised. Several valid grounds for filing a trademark opposition include:

  1. If the trademark is similar or identical to an earlier or existing registered trademark
  2. If the mark is devoid of distinctive character
  3. If the mark is descriptive in nature
  4. If the application for the trademark is made with bad faith
  5. If the mark is customary in the current language or the established practices of business
  6. If the trademark is likely to deceive the public or cause confusion
  7. If the mark is contrary to the law or is prevented by law
  8. If the trademark is prohibited under the Emblem and Names Act, 1950
  9. If the mark contains matters that are likely to hurt religious feelings of any class or section of people

Seeking the assistance of legal experts is recommended when preparing and submitting a counter-statement for trademark opposition. Our team of legal professionals at Docs Uncle can provide expert guidance and support for responding to trademark opposition.

Documents for Trademark Opposition

Documentation required for replying to the trademark opposition as follows:

  1. Details of applicant
    1. Name
    2. Nationality
  2. Power of attorney (It allows the attorney to take any action on behalf of an applicant.)

Procedure for Counter-statement of Trademark Opposition

Filing a counter-statement implies that an opposition has already been raised against the trademark you're trying to register, and now you are legally responding to that opposition. The Registrar has sent you a notice of trademark opposition, and you are addressing it through your counter-statement.

Step-1
Evidence phase

The grounds on which you are raising opposition to the trademark.

  1. A counter-statement must be filed within two months or 60 days from the date of the receipt by the Applicant of notice of opposition from the Registrar. Failure to do so may result in the refusal of the trademark. The counter-statement is initially submitted to the Registrar, and if all formalities are met, it is then sent to the individual or company that filed the opposition.
  2. After receiving the counter-statement, the individual or company opposing the trademark has two months to provide evidence in support of their opposition, typically in the form of an affidavit, to strengthen their case. They can also choose not to file evidence and rely on the facts stated in the notice of opposition, but they must inform the Registrar of their decision, or the opposition may be marked as refused.
  3. If the opposing individual or company provides evidence, the applicant must then submit their own evidence in support of their counter-statement within two months of receiving the evidence from the opposition through the Registrar. The applicant also has the option to waive their right to submit evidence.
  4. If the applicant provides evidence, the opposing individual or company can choose to file additional evidence in support of their opposition. They must do so within one month of receiving the evidence from the applicant's counter-statement.
Step-2
Hearing phase

Following the conclusion of the evidence phase, a hearing is conducted, and both parties (the applicant for the trademark and the opposing individual/company) are informed of the hearing date at least one month in advance. The ultimate decision regarding the acceptance or rejection of a trademark rests solely with the Registrar.

Frequently Asked Questions (FAQs)

You can contest a trademark opposition by submitting a well-drafted, point-by-point counter-statement, presenting evidence, and participating in a hearing. Alternatively, you can simplify the process by seeking assistance from Docs Uncle for your counter-statement in response to a trademark opposition.

The statutory fees for filing opposition and counter statement is Rs. 3000 for physical filing and Rs. 2700 for online filing. Moreover, it is pertinent to mention that the aforementioned fees shall have to be paid for every single opposition and also for filing counter statements to every single opposition.

Opposition period for the trademark is 4 months from the date of advertisement in the Trademark Journal.

Why Uncle Docs

Simple & Fast

we understand that your time is valuable,that's why we've designed a simple and fast process.

Affordable

We offer a combination of exceptional affordability and high-quality professional services.

4.8 Google rating

Our Customers love us. We enjoy tremendous trust in form of Google Rating

All Services

We offer a range of services, including startup registration, GST, ROC filing, payroll, and (IPR).

Free Consultation

Schedule call with an expert

Call Now
Partner With Us