Difference Between Trademark Objection and Trademark Opposition

The process of trademark registration in India is not always straightforward. During the registration process, various hurdles can delay or even prevent the registration of a trademark. Two of the major hurdles that applicants may encounter are “trademark objection” and “trademark opposition.” Both can delay or prevent the registration of a trademark, but legally and procedurally, they are distinct. For startups, brand managers, legal professionals, and entrepreneurs navigating the trademark registration framework, understanding the difference between objections and opposition becomes crucial as it leads to timely, informed, and effective actions.

What is a trademark objection?

After being examined by the examiner, the trademark registration application is subjected to objection by the examiner if it violates the Act and rules under sections 9 and 11 of the Trade Marks Act, 1999, and the objection raised is called a trademark objection. The objection is communicated to the applicant through an official document known as the examination report.

Grounds for Objection

● Section 9 (Absolute Grounds): The objection under this ground is raised when the mark lacks distinctiveness or is descriptive, generic, or deceptive.

● Section 11 (Relative Grounds): The objection under this ground is raised when the mark is either identical or deceptively similar to an existing mark.

Response Mechanism

Within 30 days of receiving the examination report, the applicant must respond to the objection raised by the examiner. This includes submitting a reply with arguments, evidence, and, if necessary, attending a hearing. The mark proceeds for publication in the Trade Marks Journal if the registrar is satisfied with the reply and evidence presented.

What is a trademark opposition?

When the examiner passes the trademark application, it is published in the Trade Marks Journal for four months; during this period, a formal challenge can be raised by a third party, which is known as trademark opposition. This process is a public safeguard that allows businesses or individuals to prevent the registration of marks that may infringe upon their rights. The opposition should be submitted within four months following the date the trademark is published in the Trademark Journal.

Legal Basis for Opposition

A trademark application can be opposed based on sections 9, 11, 12, and 18 of the Trade Marks Act 1999, which can be based on various factors such as prior use, bad faith, likelihood of confusion, or deceptive similarity.

Who can file for opposition?

Opposition is not just limited to the owner of a registered trademark; it can be registered by any individual, entity, business, or organization, or even an unregistered prior user who believes that a particular trademark should not be registered.

Key points

● The opponent doesn't need to hold a registered trademark to file an opposition.

● Opposition can be filed based on:

● Prior use

● Likelihood of confusion

● Bad faith

● Well-known status

● Or any other legal ground as per Sections 9, 11, 12, and 18 of the Trade Marks Act.

● To initiate an opposition, Form TM-O must be submitted along with the required government fee.

Example: A local tea brand that has been using the name ‘chaiwala’ for many years, even if unregistered, can oppose a new application for the same/similar mark filed by someone else because under section 11(3) of the Trade Marks Act, 1999, an unregistered prior user has the right to oppose registration by any subsequent applicant if they can prove continuous and bona fide use of the mark.

Stages of Opposition

● Notice of Opposition (TM-O)

● Counterstatement by Applicant

● Evidence in Support of Opposition

● Evidence in Support of Application

● Rejoinder

● Hearing and Decision

Key Differences Between Trademark Objection and Trademark Opposition

1. Stage: The registrar raises an objection during the examination phase, while an opposition is filed by a third party after the publication of the trademark in the trademark journal.

2. Who can file: Objections are raised by the Trademark Registrar, while any third party, either an individual, company, or prior user, can file an opposition.

3. Nature: An objection is an administrative issue, while opposition is a legal challenge.

4. Timeline: Objection must be filed within 30 days of receiving the report. Opposition can be filed within 4 months of publication.

5. Decision: Objections are resolved through a written reply and hearings before the Registrar. Oppositions involve evidence, hearings, and a final decision by the Registrar.

Importance of Knowing the Difference

The terms “opposition” and “objection” can often be used by most startups and businesses interchangeably, which can lead to confusion and missed deadlines. It becomes extremely crucial to understand that:

• An objection arises during the examination phase, before the trademark is published for public viewing.

• Opposition comes after the mark is made public.

• An objection is raised before the trademark is made public through journal publication.

Procedural Steps to Overcome an Objection

For objection:

● Submit a detailed reply addressing the grounds cited.

● Present evidence of prior use, distinctiveness, or disclaimers.

● Attend personal hearings to clarify points before the registrar.

For Opposition:

● File a strong counterstatement backed by documentary evidence.

● Engage in the evidence-exchange process effectively.

● Opt for an amicable settlement or a legal challenge based on the facts.

Recent Trends and Insights

Due to heightened brand awareness, better enforcement, and stricter examination protocols, the number of trademark objections and oppositions in India has increased. Conducting a thorough trademark search, considering brand clearance services, and taking legal counsel before and during the application process are recommended.

Moreover, as AIs are expected to enhance consistency in objections for trademark screening by the Indian Trademarks Registry, it may also increase procedural scrutiny.

In conclusion, from filing a trademark application to obtaining registration, the journey of trademark registration involves multiple layers of legal scrutiny. For timely and successful registration, Understanding the difference between a trademark objection and a trademark opposition is crucial.

Businesses can secure their trademarks and build a strong legal foundation for their brand by proactively addressing objections and effectively defending against oppositions. Even contested trademarks can successfully proceed to registration and enjoy protection under the law with the right legal strategy.