Can opposition be filed for the same trademark in a different class?

 

Trademark opposition in India occurs after the registrar has accepted the trademark registration online application on the basis of distinctiveness. After that, it publishes in the journal for the third-party opposition, if any. But, can opposition be filed for the same trademark in a different class?

 

 

What exactly is Opposition Filing?

A trademark opposition is filed with the trademark office when a third party believes there is a likelihood of confusion between two trademarks. As a result of this uncertainty, an opposing party's reputation may suffer.

 

It is why opposing the same trademark in a different class might be difficult. You must first file a notice of opposition before filing an opposition for the same trademark but in a different class.

 

Because of the nature of this form, you must submit it online. On paper, it will not be accepted. 

 

A notice of opposition should include information about your application, what classification you believe it should have received, and any proof supporting your claim. 

 

Your application may have been categorised as Class 9 or Class 25, but you believe it should have been classified as Class 36.

 

Who can file an opposition to a trademark application?

During the trademark application stage, anyone can object to a trademark application filed by an applicant for a variety of reasons.

 

Section 21 of the Trademark Act states that "any individual" may oppose a trademark, regardless of his economic or personal interest in the case.

 

A trademark can be challenged by a customer, member of the public, a rival, or anybody else. Furthermore, the individual filing the trademark opposition must be a previously registered trademark owner.

 

What is the trademark opposition procedure?

 

Step 1 - Opposition Notice

Any individual may file an opposition notice on a trademark that appears in the trademark journal within four months of the initial date of publication.

 

It must be submitted on Trademark Form 5 in the prescribed format and with the appropriate fees.

 

Step 2 - Counter-Statement

The trademark registrar would serve a copy of the trademark opposition notice to the trademark applicant after the trademark opposition notice was filed with the registrar. The trademark applicant must file the rebuttal statement within two months of receiving the objection notices.

 

The trademark application will be "abandoned" if the trademark applicant fails to file the counter statement within the prescribed time frame. However, it is vital to understand the state of trademark registration.

 

Step 3 - Hearing

Following the conclusion of the evidence filing stage, the registrar shall give notices to both parties announcing the date of hearing, which shall be at least one month from the date of the first notice. The hearing is based on the opposition notice, counter-statement filing, and evidence submitted. The registrar hears the case, and if any of the parties fail to appear for the hearing, the registrar will find against him.

 

Step 4 - Appeals

The registrar decides whether the opposition was successful based on a study of the evidence submitted and a hearing of both parties, and thus whether the trademark should be registered or not. However, a party who is dissatisfied with the registrar's judgement may appeal it to the Intellectual Property Appellate Board.

 

Trademark Opposition Time Limit

For three months after the trademark advertisement in the Trade Marks Journal, any person may dispute the trademark registration (which may be extended by a period not exceeding one month). Trademark opposition filings can only be done in the Trademark Registrar's office and cannot be taken to a Court or the Appellate Board immediately (IPAB).

 

If a trademark objection is successful, the trademark's registration will be denied. The brand will be registered if the trademark opposition application is denied.

 

Why is a trademark opposed?

A trademark opposition can be filed under several sections, including absolute reasons, relative grounds, forbidden marks, and even the proprietorship of the contested brand.

 

The Indian trademark law does not specify any grounds for resistance. 

 

The following are some of the reasons why a trademark opposition may be filed:

 

• The trademark is close or identical to a previously or currently registered trademark.
• The trademark lacks distinguishing characteristics.
• The trademark is self-explanatory.
• The application for trademark registration is made in ill faith.
• The trademark is common in the present language and/or in the established business procedures.
• The trademark is likely to mislead or confuse the public.
• The trademark is illegal or prohibited by law.
• The Emblem and Names Act of 1950 makes the trademark illegal.
• The trademark contains material that is likely to offend any group or segment of people's religious sensibilities.

 

The Expected Outcome of Oppositions in Different Classes

Some trademark owners may find it easier to launch an objection against a trademark in a different class. Assume the trademark is registered for use as a service mark. If the trademark is registered for use in goods, you have more grounds for mounting an opposition. The process will be similar if you file an objection for the same trademark in a different class. In fact, filing oppositions for several kinds of trademarks may provide greater outcomes because there are additional ground criteria for each form of opposition. As a result, judicial proceedings should be much less time-consuming and more efficient.

 

 

If you are challenging a potential trademark, you must meet the following criteria:

 

• You have not given up on your goal.
• Your mark is being used in connection with the same or comparable goods/services as those indicated in the pending application.
• The applicant has no legal or justifiable reason to use the mark.
• Your existing and preceding marks would be confused by the proposed registration.
• If you file an opposition to a new trademark, you must demonstrate that:

                            I.            Your brand is unique.

                         II.            Your brand has become distinct as a result of its use (or through intent to use)

                      III.            There is no risk of dilution or confusion between your new and existing marks.

 

Conclusion

Because the opposition process can be lengthy for trademark registration online, it is critical to understand that there are two sorts of resistance. 

 

The first sort of trademark includes those for which opposition is filed before any other party has filed an application for the same trademark in the same class. 

 

The second sort of trademark is one for which opposition is lodged after another party has applied for the same trademark in the same class. 

 

All oppositions submitted by a trademark owner will include the filing party's name and identification number.

 

 However, it is not required if they do not wish to disclose this information.