Trade Mark Oppositions
India has a well-developed system of oppositions to registrations of trade marks. All oppositions must be filed at one of the five (5) Trade Marks Registry (“Registry”) offices located in Delhi, Mumbai, Kolkata, Chennai and Ahmedabad. The office in which the opposed application has been filed determines the office in which the opposition must be filed. However, in recent times, it has become possible to file oppositions electronically through the Registry’s online filing gateway. Accordingly, for e-filed oppositions, the question of the office in which the opposition should be filed is moot.
All oppositions must be filed within a non-extendible four (4) month window counted from the date of publication of an application in the weekly Trade Marks Journal. Thus, the Registry gives sufficient time for a potential opposer to contact an applicant to attempt settlement, assuming a settlement is possible. Since opposition proceedings are often protracted, and parties could end up settling anyways, the 4 month window could be beneficial in avoiding unnecessary expenditure of resources. Sometimes, however, settlement overtures do not yield results until an applicant is faced with a filed Notice of Opposition. In such cases, opposers might not be left with any choice, but to file a Notice of Opposition and attempt settlement. The law does not provide for suspension of opposition proceedings owing to settlement negotiations. However, practically speaking, this is not disadvantageous to parties because, currently, opposition proceedings tend to be quite protracted, giving enough time to parties to reach a settlement.
The law provides a potential opposer several grounds on which to base an opposition. Thus, an opposer could bring an opposition on the basis of lack of distinctiveness, a prior Indian registration, a prior Indian application, prior adoption of a mark in India or abroad, well-known status of a mark, etc. It is noteworthy that an opposition can even be based on prior use of a mark outside India if such use is extensive (both in volume and geography) and continuous such that consumers in India are aware of the opposer’s mark and associate it with a single source. Often this available ground has provided solace to foreign brand owners who have well-known brands, but no Indian presence! The law also states that an opposition can be filed on the ground that use of a mark India is liable to be prevent under copyright law.
Modernization efforts at the Trade Marks Registry have been ongoing for some time now. A majority of filings are done through the e-filing gateway, including oppositions. Insofar as opposition proceedings are concerned, the e-filing gateway works well and ensures instant proof of filing and updating of records. Unlike some countries such as the United States, parties to a contested opposition proceeding must appear for an oral hearing. Owing to the immense backlog at the Trade Marks Registry, it has been taking years for oral hearings to be scheduled. This may change in times to come! Recently the Registry initiated a special hearing drive aimed at disposing off matters in which parties had arrived at a settlement or applicants had withdrawn their applications pursuant to the opposition. We expect the Registry to announce a special hearing drive for contested opposition matters soon!