Trademark Registration in Coimbatore (2)

1
Opposition to Registrationof a Trademark
2
Corresponding Law  Scope and Applicability

• This section corresponds to Section 21 of the
  Trade and Merchandise Marks Act, 1958.With regard
  to notice of opposition to registration the
  Provisions of (old) section 21 of the (old) Act
  are specific. The general provisions explained
   in (old) section 101 will not be applicable on
  the principle. Opposition defines that any person
  may, within three months from the date of the
  advertisement of an application for trademark
  registration or within that further period, does
  not increase the time as one month, as the
  Registrar, on application made to him in the
  prescribed manner and on payment of the specified
  fee, allows, give notice in writing in the
  specified manner to the Registrar,
  of opposition to the trademark registration.

3
Trademark Registration
4
Procedure under this Section

• The opposition under sub-section (1) shall be in
  Form T.M.5 and shall be given within three months
  from the date of advertisement in the Trade Marks
  Journal Rule 47(1).The notice should contain
  the grounds of opposition, the particulars of the
  advertisement in the Trademarks Journal, and the
  class of goods under which the trademark us
  advertised Rule 47(1).It shall be given in
  existing in three copies and one copy will be
  sent by the Registrar to the applicant
  Sub-section(2).

5
Filing an opposition Procedure

• On receipt of notice which is from the Registrar,
  the applicant shall file a counter-statement,
  which shall be in duplicate, on Form Trade Mark 6
  (Rule 48).One copy shall be sent to the opponent
  Sub-Section (3) and on receipt thereof the
  opponent shall within such further two months
  either leave with the Registrar that the evidence
  by the proper source of affidavit as he may want
  to adduce in support of his opposition or shall
  intimate to the Registrar and to the applicant in
  writing that he does not desire to adduce in
  support of his opposition. He may produce to the
  applicant copies of any evidence that he appears
  with the Registrar. Time for opposition may be
  extended by a further period not increasing the
  one month in the aggregate on an application made
  to the Registrar with the specified fee. When the
  Assistant Registrar extended the time he was not
  making a decision in the sense in which that word
  is used. He was merely extending the time by one
  month under Section 21(1). It didnt cause any
  changes in the rights and liabilities of the
  parties.

6

• A decision means a concluded choice of opinion.
  It is an authoritative answer to the question
  raised before a court. It is the settlement of a
  controversy submitted to it. Decision implies the
  exercise of a judicial determination as the final
  and definite the result of examining a question.
  An order granting extension of time is not of
  such a nature. It is not such a decision as to
  give the aggrieved person a right to appeal. It
  is such a procedural order in aid of proceedings.
  If the opponent fails to put in his evidence as
  per rule 48,he shall be deemed to have abandoned
  his opposition unless the Registrar otherwise
  directs.

7
Opposition carried on by the Evidence

• Within two months from the receipt by the
  applicant of the copies of affidavit in support
  of the opposition or of the intimation, that the
  opponent does not want to counting the number as
  any evidence in support of his opposition, the
  applicant shall leave with the Registrar that the
  evidence by way of affidavit as he wants to count
  the number for in support of his application and
  shall deliver to the opponent copies thereof or
  shall notify to the Registrar and the opponent
  that he does not want to adduce the evidence but
  intends to rely on the facts stated in the
  counter-statement and/or on the evidence already
  carried by him in connection with the application
  in question. In case the applicants  based on any
  evidence already carried by him in connection
  with the application, he shall produce to the
  opponent copies thereof. This evidence shall be
  confined to matters strictly in reply. 

8

• Where the trademark is already exhibits to
  affidavits filed in an opposition a copy or
  impression  shall be send to the other party on
  his request and at his expense or, if such 
  impressions cannot conveniently be furnished, the
  originals shall be carried out with the Registrar
  in order that they may be open for inspection.
  Where a original document in any of the language
  other than the common Universal language as
  English is preferred to in the notice of
  opposition, counter-statement or an affidavit
  filed in an opposition, an attested translation
  thereof in English shall be furnished in
  duplicate.
• Upon the completion of the evidence , the
  Registrar shall give notice to the parties of a
  date when he will hear the arguments in the case.
  Such kind of appointment shall be for a date of
  minimum of one month after the notice given,
  unless the parties consent to a shorter notice.
  Within fourteen days from the receipt of the
  notice, any party who does not so notify the
  Registrar on Form T.M 7. The decision of the
  Registrar shall be notify to the parties in
  writing. The security for the costs which the
  Registrar may require under Sub-Section (6) of
  section 21, may be fixed at any amount which may
  be consider proper and such amount may be further
  enhanced by him at any stage in
  the opposition proceedings for the required
  unique trademark registration.

9
Trademark Registration
10
Any person Opposition of Trademark Registration

• The opposition to the registration of a
  trademark may be made by Any person and not
  only by a person aggrieved. The reason is that
  public interests are also to be considered and
  the point of view of the public heard. Where a
  person fails to enter his opposition or, having
  failed, fails to follow it up he may nevertheless
  seek his remedy under (old) section 56 in the
  event of opposition not fructifying. Section
  21(1) of the Act lays down the limitation during
  which a person may give notice of opposition to
  the registration. It also lays down the starting
  point of the period of limitation which is the
  date of advertisement or re-advertisement of an
  application for registration. Re-advertisement 
  can be order under section 20 of the Act wherein
  the Registrar wherein the Registrar has been
  given a discretion to cause an application to be
  advertised again. The omission of the word
  notification from the section 21(1) of the Act
  clearly shows that it was not meant to case a
  person to give a notice of opposition
  to trademark registration. The amendments are
  corrections are usually of simple character and
  are of no practical significance to the person
  who intends to oppose. It is in these
  circumstances that Registrar, has no exercise his
  discretion to re-advertise or to notify the
  correction or amendment. The opposition to
  the registration of a trademark may be made by
  Any person and not only by a person
  aggrieved. The reason is that public interests
  are also to be considered and the point of view
  of the public heard.

11

• Where a person fails to enter his opposition or,
  having failed, fails to follow it up he may
  nevertheless seek his remedy under (old) section
  56 in the event of opposition not fructifying.
  Section 21(1) of the Act lays down the limitation
  during which a person may give notice
  of opposition to the registration. It also lays
  down the starting point of the period of
  limitation which is the date of advertisement or
  re-advertisement of an application for
  registration. Re-advertisement  can be order
  under section 20 of the Act wherein the Registrar
  wherein the Registrar has been given a discretion
  to cause an application to be advertised again.
  The omission of the word notification from the
  section 21(1) of the Act clearly shows that it
  was not meant to case a person to give a notice
  of opposition to trademark registration. The
  amendments are corrections are usually of simple
  character and are of no practical significance to
  the person who intends to oppose. It is in these
  circumstances that Registrar, has no exercise his
  discretion to re-advertise or to notify the
  correction or amendment.

12
Effect of Withdrawal application

• Where an applicant or trademark
  registration withdraws his application on the
  opposition of the advertised mark of another
  person, the person who opposed, cannot on that
  ground claim proprietary right for himself over
  the Trademark. The words Any person referred to
  above need to be only a prior registered
  trademark owner. Even a customer, a purchaser, or
  a member of the public likely to use the goods
  may object to the trademark registration of a
  trademark in respect of such goods on the ground
  of possible deception or confusion. Deception or
  confusion is a matter of public interest which is
  an important concern of the Trade Mark Law.

13
Conditions and Limitations of Opposition

• The words Conditions and Limitations have no
  reference to the power of amendment to the
  trademark. The words Conditions and
  Limitations have the things like types of user
  of the trademark . The only power the registrar
  has of allowing amendment of a trademark
  proposed  for trademark registration is before or
  at the time of acceptance of the trademark for
  advertisement for purposes of trademark
  registration and also after acceptance provided
  the applicants makes application for and asks for
  such amendment for the opposition. When an
  application for the Trademark registration has
  been accepted, it has to be advertised as
  mentioned in the Section 20 of this Act. Upon an
  application for trademark registration have been
  made, and the advertisements were issued and a
  notice of opposition was received. Without caring
  the opposition and hearing the parties, the
  trademark registration was effected. Under such
  circumstances, the provisions of Section 23(1)(b)
  applies and one of the pre-conditions is that the
  opposition should be decided . In other words
  before an application for trademark
  registration is granted, the opposition must be
  considered and rejected. In case an opposition
  had been filed but by, mistake or inadvertence,
  it was not considered, so that it cannot be said
  that the opposition had been decided for the
  applicant. Thus, the registration was granted
  although the pre-condition  had been satisfied .

14
Opposition to Registration Mark

• Notice of opposition to trademark
  registration and counter-statement are like
  plaint and written statement. The notice of
  opposition is to be filed within the period
  prescribed under the provisions of Section 21 of
  the Trade Marks Act, 1999.This Act being a
  special statue the provisions of the Limitation
  Act,1963 would not be applicable, and
  consequently, notice of opposition filed beyond
  the prescribed time cannot be accepted by the
  Registrar of Trade Marks. Where the applicant for
  condonation of delay in filling counter-statement
  is made showing sufficient cause of delay, the
  Registry should be directed to take
  counter-statement on record. If Rule 47(6)of the
  Trade Marks rules,2002 as it stands now has to be
  accepted, then it confers power to extend time
  only if the application is made before the expiry
  of the period of six months. Such a rule will be
  clearly defines in section 21(1) of the Trade
  Marks Act, 1999. Thus, it should be struck down
  as null and void. Delay in filing notice of
  opposition was due to delay in receipt of
  trademark journal in the office of attorney. It
  was held that the expression from the date of
  advertisement has to be considered from the date
  of knowledge. The applicant objected to the
  appearance of the foreign companys attorney
  before the Tribunal on the ground that the
  foreign companys attorney cannot appear until
  and unless he gives security for costs of
  proceedings ,if not, opposition may be treated as
  abandoned. The opposition proceedings have been
  legally fled in favour of the foreign company by
  its attorney, in the case of default, such
  security shall be recovered from the said
  foreign company through its legally authorized
  representative.

15
Extension of time

• Request on Form TM-44 was made for extension of
  time for filing application under section 21(1)
  of the Trade Marks Act,1999. Section 21(1) of the
  said Act read with the rule 47(1) of the Trade
  Marks  Rules, 2002 empowers the Registrar to
  extend time even though it has expired. Where the
  delay occurs merely on account of an inadvertent
  error in advertising, the appellant application
  under section 20(2) of the said Act should be
  allowed. The error occurred was clearly a Rule of
  procedure and any narrow interpretation for not
  allowing the application would shake the judicial
  conscience and adversely affect the cause of
  justice and law.