IP IntelligenceIP Lex ›Sign inBook a service

IP Intelligence › Ask a Question › Trademark: my application was objected to or opposed. What n

Guided answer

Trademark: my application was objected to or opposed. What now?

Trade mark deadlines are short. An examination report and a notice of opposition follow different rules - work out which one you have first.

A notice or order saying the application is abandoned← back a step

Find out why it was abandoned, and act quickly.

High complexity - significant legal consequences

  • Check the order or status page for the reason: no reply to the examination report, no counter-statement, or non-attendance at a hearing.
  • Ask your attorney straight away whether review, appeal or a fresh application is the right remedy.
  • If you file a fresh application, check whether anyone else has filed a similar mark in the meantime.

Start again

Who you are changes the answer

The deadlines are the same but your role decides what you must do and by when.

Applicant who received an examination report

You have one month from receiving the report to respond (rule 33). If you do not respond, the Registrar may treat the application as abandoned. If your response is not satisfactory, or you ask for a hearing, a hearing is held; if you miss it and have not replied, the application may be treated as abandoned.

Check

  • The date you received the report.
  • Whether you want a hearing in addition to a written response.

Source: Trade Marks Rules 2017, r.33

Applicant whose mark is opposed

File a counterstatement on Form TM-O within two months of receiving the notice of opposition (rule 44). If you do not, the application is deemed abandoned (s.21(2)). Evidence stages follow, and a non-resident party can be ordered to give security for costs (s.21(6)).

Check

  • The date the notice reached you.
  • Which facts in the notice you admit or deny.

Source: Trade Marks Act 1999, s.21 · Trade Marks Rules 2017, r.44

Brand owner who wants to oppose

Any person may oppose within three months of the advertisement, which the Registrar can extend by up to one more month in total (maximum four months) on request and fee (s.21(1)). Opposition is on Form TM-O and a fee applies for each class opposed (rule 42).

Check

  • The Journal date of the advertisement.
  • Which of your earlier rights apply (registered mark, prior use, well-known status).

Source: Trade Marks Act 1999, s.21 · Trade Marks Rules 2017, r.42

Owner of a well-known mark

The Registrar considers factors such as recognition, duration and geography of use, promotion and enforcement record (s.11(6)). A mark found well known in at least one relevant section of the Indian public is treated as well known for registration (s.11(8)), and the Registrar cannot require use or registration in India, or recognition abroad, as conditions of that finding (s.11(9)).

Check

  • Evidence of reputation in India, even without Indian registration.

Source: Trade Marks Act 1999, s.11

Not sure whether this applies to your invention?

The honest answer usually needs someone to look at your actual disclosure, your timeline and the prior art. That is a conversation, not an article.

Talk to Ragulika IPSee our services