Trademark Opposition in India: Notice, Reply, Fees & Complete Procedure

Trademark registration provides legal protection to the unique branding of an enterprise in terms of brand name, logo, symbol, tagline, or any other unique feature. However, filing an application for trademark registration does not necessarily result in trademark registration. An eligible third party may file an objection against the trademark application once the same is published in the Trade Mark Journal.

The entire trademark opposition in India is regulated by the Trade Marks Act, 1999 and Trade Marks Rules, 2017. It is very important to understand the trademark opposition process in India for trademark applicants as well as for businesses wishing to protect their existing brand rights.

Currently, the trademark system in India is dealing with the increasing number of trademark applications. As per the Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM), there have been 5,52,190 trademark applications filed in FY 2024-25 as against 4,76,089 applications filed in FY 2023-24. This constitutes an increase of about 16%.

What Is Trademark Opposition in India?

Trademark opposition is defined as the procedure whereby the applicant of a trademark published in the Trade Marks Journal can object to the registration of the trademark.

According to Section 21 of the Trade Marks Act, 1999, anyone can oppose the application for the period provided for by law. The opposition does not have to emanate from the holder of the same trademark that is already registered. The applicant can use any other grounds provided in the Act.

This trademark opposition process provides an opportunity for the applicant to defend his trademark before the Registrar.

Common Grounds for Trademark Opposition

An opposition can arise on the following grounds:

• Similarity with a previously registered or pending trademark
• Likelihood of confusion
• Absence of distinctiveness
• Genericness or descriptiveness of the trademark
• Adoption in bad faith
• Previous use of a similar trademark by the opponent
• Similarity to a well-known trademark
• Overlap with a prior right
• Misleading or deceptive nature of the trademark
• Such grounds may vary depending upon the specific facts of the case.

When Can a Trademark Be Opposed?

A trademark may, in general, be opposed after it has been advertised or re-advertised in the Trade Marks Journal. It must be noted that there is a clear difference between the period referred to in the Act and the procedural period as per the present Rules. Section 21 mentions three months from advertisement or re-advertisement, plus an additional one-month period. Rule 42 at present mentions that the notice of opposition in Form TM-O shall be filed within four months from the publication of the advertisement or re-advertisement in the Journal. Hence, care must be taken to check the date of Journal publication.

Trademark Opposition Notice: What Does It Contain?

Step one in the process involves issuing a trademark opposition notice to the Trade Marks Registry. As per Rule 43, this notice should have certain important information including:

• The application number that is the subject of the opposition
• The goods or services
• The name of the applicant of the trademark
• Information on the prior mark or right which is claimed
• Information on the opposition
• The reasons for opposition
• This notice should also be well authenticated and signed by the opposition or their agent.

The drafting of an inadequate notice may jeopardize the opposition process, as the applicant must be aware of the nature of the opposition.

Filing Form TM-O

The notice is made on the Form TM-O. The latest TM-O form provides for trademark opposition cases and some other cases before the Trade Marks Registry.

Another step to be taken by the opponent is to make sure the proper classes are chosen since the trademark opposition fees are computed on a per-opposed-class basis.

How to Reply to a Trademark Opposition?

After the opposition notice has been served on the applicant by the Registrar, the applicant will have to serve a counterstatement in reply. According to Rule 44, the counterstatement will be filed on the Form TM-O within two months after receiving the copy of the notice of opposition.

The trademark opposition reply should not simply deny every allegation. A strong counterstatement normally:

• Responds to each important allegation
• Explains the applicant's position
• Identifies the applicant's rights in the mark
• Provides relevant facts about use and adoption
• Challenges weak or unsupported claims
• Sets out appropriate legal grounds
• Is properly verified

Failure to file the counterstatement within the prescribed period can seriously affect the trademark application. Legal advice can be useful where the opposition involves prior use, multiple conflicting marks, or complex evidence.

Complete Trademark Opposition Procedure in India

The trademark opposition procedure can be understood through the following stages.

Step 1: Trademark Application Is Advertised

After examination and processing, the trademark application may be advertised in the Trade Marks Journal. This allows third parties to oppose the proposed registration.

Step 2: Opposition Is Filed

The opponent files Form TM-O with the required details and prescribed government fee within the applicable period. The Registrar ordinarily serves a copy of the opposition on the applicant. Rule 42 states that the copy is ordinarily served within three months of receipt by the appropriate office.

Step 3: Applicant Files Counterstatement

The applicant responds through a counterstatement in Form TM-O within two months of receiving the opposition notice. The counterstatement is then ordinarily served on the opponent within two months of receipt by the Registry.

Step 4: Opponent Files Evidence

Under Rule 45, the opponent has two months from service of the counterstatement to either:

• Submit evidence by affidavit in support of the opposition, or
• Inform the Registrar and applicant that the opponent does not wish to submit evidence and intends to rely on the facts stated in the opposition.

Copies of evidence and exhibits must also be provided to the applicant. If the opponent takes no action within the prescribed period, the opposition is deemed abandoned.

Step 5: Applicant Files Evidence

Two months are allowed to the applicant from the date of receipt of evidence from the opponent or notification in that regard for filing evidence to support the trademark application. 

The applicant may also notify the Registrar that no evidence will be filed henceforth and that the counter statement/evidence already filed will suffice. Not following this step can lead to abandonment of the application.

Step 6: Opponent May File Evidence in Reply

The opponent is allowed one month from the date of receipt of evidence filed by the applicant for filing evidence in reply.

Step 7: Hearing Before the Registrar

When the evidence stage ends, notice of the first hearing will be issued by the Registrar. Pursuant to Rule 50, the first hearing date shall normally be at least one month after the first notice. A request for adjournment for good reason may be made using Form TM-M. The Rules provide for limitations on adjournments, both in terms of their frequency and length. Written submissions may also be taken into consideration by the Registrar.

Step 8: Decision

Upon taking into account all pleadings, evidence, submissions, and applicable laws, the Registrar makes a decision in writing. If the opposition is unsuccessful, then the trademark application may continue to the registration process according to the provisions of the Act. If the opposition is successful, then registration may not be approved at all or in part.

Trademark Opposition Fees in India

The government fee for filing a Notice of Opposition depends on the filing method and the number of classes being opposed. The applicable fee category should be verified before filing.

Important: The above government charges are calculated per class opposed. Professional fees charged by lawyers or trademark consultants are separate and may vary depending on the complexity of the opposition.

Additional professional costs may arise for drafting the opposition, preparing evidence, conducting

Trademark Opposition vs Trademark Objection

People frequently confuse these two concepts. A trademark objection means any objection from the Trademark Registry in relation to the examination of the trademark application. The applicant will answer the examination report.

Trademark opposition, however, is raised by a third party once the application has already been advertised in the Trade Marks Journal. Therefore, it can be stated that an objection is raised by the Registry, whereas an opposition is an action initiated by an outside entity.

How to Reduce the Risk of Opposition?

Trademark research before filing will assist in the detection of any possible conflicts. Official IP India website has features to conduct trademark research.

The following steps are involved in the process before applying for a trademark:

• Identical trademark search
• Similar spelling and pronunciation check
• Checking the appropriate classes
• Status check of previous trademarks
• Checking the nature of goods and services
• Reviewing prior usage where applicable
• Determining the distinctiveness of the trademark
• This will strengthen the trademark application and avoid unnecessary conflicts.

Companies intending to apply for a trademark online should confirm the prevailing government charges and filing requirements rather than depending on the old ones.

Key Documents Used in Opposition Proceedings

The following documents will be relevant to the case, depending on its nature:

• Trademark application information
• Notice of opposition
• Counter statement
• Certificates of registration
• Prior trademark application
• Invoice and sales information
• Advertorial information
• Website/social media information
• Photographs of packaging/products
• Affidavits
• Evidence of prior use
• Evidence of reputation/goodwill
• Submissions in writing

Important Points to Remember

Some deadlines need to be paid special attention to:

• Opposition: in general, within the specified period for Journal publication
• Counterstatement: within two months of receiving opposition
• Opponent’s evidence: within two months of serving the counterstatement
• Applicant’s evidence: within two months of receiving opponent’s evidence or intimation
• Opponent’s reply evidence: within one month of receiving applicant’s evidence
• Hearing: scheduled after the completion of evidence

Failing to meet the deadline can have severe implications. For instance, failing to act on the part of the opponent as per Rule 45 could lead to the abandonment of the opposition, and on the part of the applicant as per Rule 46, the application may be abandoned.

Facing a Trademark Opposition?

Protect your brand with the right response. PSR Compliance helps you with trademark opposition notices, counter-statements, evidence filing, and hearing support.

Call us on: (+91) 8796104190
Write to us: support@psrcompliance.com

Conclusion

Trademark opposition in India is a crucial mechanism in the trademark registration process in India. Given that there were over 5.5 lakh trademark registrations in FY 2024–25, companies need to keep track of the Trade Marks Journal to take proactive measures against infringement.

While preparing for a new trademark registration, filing an opposition in response to a notice, or protecting an existing brand, the company should have proper documentation in place and adhere strictly to deadlines. Conducting a thorough trademark search before applying is another way to discover any problems beforehand.

FAQs

1. Who can file a trademark opposition in India?

Any person can file a trademark opposition in India in accordance with Section 21 of the Trademark Act of 1999 in the prescribed manner and within the prescribed time.

2. What is the cost of filing a trademark opposition?

As per IP India, the official fee for electronic filing is ₹2,700 per class opposed and for physical filing ₹3,000 per class opposed. Any legal charges by the consultant are excluded from the above amount.

3. What happens in case of non-reply to the trademark opposition?

It is the duty of the applicant to file the counterstatement in response to the trademark opposition within the prescribed time. It may be harmful for the applicant not to reply to the trademark opposition in India.

4. How long does it take to have a trademark opposition in India?

There is no specific period for each trademark opposition in India. It all depends on the pleadings, evidence, hearing, adjournment, etc.

5. Is there a chance to withdraw a trademark opposition in India?

Yes, a trademark opposition may be withdrawn according to the procedure and order of the Registrar.