My Trademark application status shows ‘opposed’. What does it mean?

If the status of the trademark application is marked as ‘opposed’ it means that the third party has opposed the registration of your trademark. The opposition is a detailed statement, to which a reply/counterstatement is to be filed.

What is the difference between Objection and Opposition?

The main difference between Trademark Objection and Opposition is that Objection is raised at a preliminary stage of the trademark registration process. Such registration is raised by the trademarks examiner. A trademark opposition is raised by any person who has an issue with your Trademark after it has been advertised in the Trademarks Journal

What is Trademark Examination?

Trademark Examination is conducted by the trademark examiner. It is a thorough preliminary check of Trademark Application (filed in TM-A Form). An objection can be raised by the examiner during the examination process. The examination report will cite all the conflicting marks/similar mark/grounds for refusal

Who is an Examiner?

A trademark examiner includes any officer in the Trademark Registry who has been given the duty of checking and examining trademark application to check if it complies with standards and guidelines of the Trademarks Act. The Trademarks and geographical indications registry recruitment rules govern the roles and duties of the trademarks registrars and examiners.

What is the procedure to check for trademark opposition?

• Go to the official site of IPIndia
• Click on the Trademarks Tab
• Click on Trademark status
• Mention Trademark application number
• You can view the complete information about the trademark, along with the status of the trademark application
• If the application is marked as ‘opposed’ it means that registration of your mark is opposed by any interested party.

What should I do if my trademark application is opposed?

• Click on Examination report link and download the same
• Check the date on examination report and calculate the last date to file the reply/counter-statement to the trademark opposition raised in the examination report.

How does the examiner examine the application?

The examiner carries thorough scrutiny to check for clerical errors and legal errors disallowed under the Trademarks Act, 1999. The examiner will check:

• If the legal requirements under the Act and Rules are met
• Grounds on which the Trademark was objected (if any) and if the same has been rectified
• If any limitations, conditions, or restrictions are to be applied to the application after being accepted.

Is there any Government fee to file the Counter-statement?

Yes, there is a government fee of Rs. 2700 for filing counter-statement for trademark opposition.

What is the deadline to file the reply?

The deadline to file trademark opposition reply or Counter-statement is thirty days from the date of issuance of the report to the applicant or Sixty days of the opposition status being published online.

Who issues the Examination report?

The Trademark examiners at Trademark registry issue the examination report.

What are the grounds for trademark Opposition?

The opposition will be raised by the third party as under the Trademarks Act, 1999 in the following situations:

• Descriptive name: If the Trademark is comprehensive, or directly indicates the basic nature of the product or service, an objection will be raised.
• Deceptive or identical: If the trademark is deceptively similar or will likely confuse the public or is imitating of an already registered trademark, an objection will be raised.
• Prohibited: If the trademark goes against the names and logos mentioned in the Emblems and Names act, 1950 or any other related law, the application will be objected by the Examiner.

Is the appointment of an attorney is mandatory to file a reply?

The reply is an opportunity to present your arguments against the opposition raised by the Examiner and should be filed properly. It is mandatory to hire a lawyer to file a reply, it is advisable to seek legal help, to better your odds.

Attorneys have an experienced understanding of trademark issues and would be able to provide sound legal advice.

My trademark application continues to be marked as ‘opposed’ even after the examination reply is filed. What should I do?

The examiner would take roughly 4-5 months to look at the trademark examination reply and analyse the same. So, it might take some time for the status to change.

How do I check if my reply has been filed by my lawyer?

On the IPIndia’s portal, you can check the status of your trademark application. If the counter-statement has been filed, the ‘Form TM-O’ will become active at the end of the application, which you can download. Also, you would have received a receipt for reply filing from the attorney who filed the same.

I missed my Trademark examination reply deadline, but the status is still shown as objected. Can I file the reply now?

Yes, as long as the status is shown objected the applicant is eligible to file the reply to the examiner. However, the deadline should be taken seriously.

Why should I file an opposition reply?

Filing a Trademark opposition reply will help the applicant in the following ways-

• The application will be saved from being abandoned
• The Trademark will progress to the next stage of the trademark application process
• Filing a reply will be a chance to defend your trademark

What is the prescribed form to file examination reply?

The e-form for filing examination reply is TM-O which is to be filed within sixty

days of the receipt of the examination report.