Someone opposed my trademark application: what to do in the first two months

You filed your trademark application. It was accepted and advertised in the Trade Marks Journal. Now someone has filed a notice of opposition against it. Your brand is not lost. But a clock has started, and it is short.

This article covers the first two months: what the law gives you, what you must file, and what happens after.

Your situation in one paragraph

Any person may oppose your application within four months of its advertisement (s.21(1), Trade Marks Act 1999). The opponent does this on Form TM-O and must file within four months of the date of the journal in which your mark was advertised (rule 42(1), Trade Marks Rules 2017). The Registrar then serves you a copy of that notice. From the day you receive it, you have two months to answer.

What you can still do today

You can defend the application. The law gives you one tool for this: the counter-statement. It is your written answer to the opponent's grounds.

Under the Act, the applicant must send a counter-statement "of the grounds on which he relies for his application" within two months of receiving the copy of the notice (s.21(2), Trade Marks Act 1999). You file it in the same form the opponent used, Form TM-O, and the rules say it must set out what facts, if any, alleged in the notice you admit (rule 44(1), Trade Marks Rules 2017).

If you send it, the Registrar serves a copy on the opponent (s.21(3), Trade Marks Act 1999). The case then moves to evidence.

The deadline clock

Here is the clock, step by step.

Day 0: you receive the copy of the notice of opposition. The two months run "from the receipt by the applicant of such copy of the notice" (s.21(2), Trade Marks Act 1999).

How is receipt fixed? The Registrar can serve documents by leaving them at your address for service, posting them, or sending them by email (rule 18(1), Trade Marks Rules 2017). A document is deemed served when the letter would reach you in the ordinary course of post, or at the time the email is sent (rule 18(2), Trade Marks Rules 2017). So an email can start your clock the minute it is sent, even if you read it days later. Check the email address and postal address you gave the Registry, and check them often.

The Registrar ordinarily serves the copy within three months of receiving the notice (rule 42(5), Trade Marks Rules 2017). There is one exception. If you have already filed the counter-statement on the basis of the copy of the notice made available in the electronic records on the official website, the Registrar does not need to serve you a copy again (proviso to rule 42(5), Trade Marks Rules 2017). In plain words: if you spot the opposition on the portal and file your counter-statement, you do not need to wait for the formal service.

Two months from receipt: your counter-statement is due. Rule 44(1) repeats the same two-month period (rule 44(1), Trade Marks Rules 2017).

Then the evidence stages, covered below. These have their own, separate clocks.

Can you get more time?

Be careful here. Do not assume a late counter-statement can be rescued.

The Act has a general power to extend time. But it says it does not cover "a time expressly provided in this Act" (s.131(1), Trade Marks Act 1999). The two months in s.21(2) is a time expressly provided in the Act.

The rules say the same thing from their side. The rule on extension of time excludes "a time expressly provided in the Act" (rule 109(1), Trade Marks Rules 2017). Where an extension is possible at all, it is made on Form TM-M and cannot exceed one month (rule 109(2), Trade Marks Rules 2017).

Neither provision gives an extension of the s.21(2) two-month period. So plan as if the date is fixed. If you think you have a special circumstance, speak to a trademark professional at once. Do not rely on an extension request.

What happens if you do nothing

The Act is blunt. If the applicant does not send a counter-statement within two months, "he shall be deemed to have abandoned his application" (s.21(2), Trade Marks Act 1999).

That means your application falls away.

Step by step: filing the counter-statement

• Find the notice. Look for the opposition on the Trade Marks Registry portal and in any email or postal communication. Note the date you received the copy. Count two months from that date, and write the last date down.
• Read the opponent's grounds. The notice must state the opponent's earlier trademark or right, where available the application or registration number and filing date, and the grounds of opposition (rule 43(1), Trade Marks Rules 2017). Know exactly what they claim: an earlier registered mark, a well-known mark, or a reputation claim.
• Decide which facts you admit. The counter-statement must say what facts in the notice you admit (rule 44(1), Trade Marks Rules 2017). Admit only what is true. Deny the rest.
• Set out your grounds. State why your application should proceed: why your mark is different, how long you have used it, and what goods or services it covers. The Act asks for "the grounds on which he relies" (s.21(2), Trade Marks Act 1999).
• Verify it. The counter-statement must be verified in the manner of rule 43(2), (3) and (4) (rule 44(2), Trade Marks Rules 2017). That means a verification at the foot, signed, dated, and with the place of signing. You must say, by reference to numbered paragraphs, what you verify from your own knowledge and what from information you believe true.
• File on Form TM-O. On the e-filing screen, Form TM-O offers "Counter Statement" as a request type (on the IP India e-filing portal). Pay the fee for each class (see below).
• Keep proof. Save the filing receipt.

The fee

The First Schedule to the Trade Marks Rules 2017 lists a fee for a counter-statement, charged for each class: ₹3,000 for physical filing and ₹2,700 for e-filing (First Schedule, entry 2, Trade Marks Rules 2017). Those figures are from the rules as notified. Check the current figure on the IP India portal before you file.

After the counter-statement: the evidence timeline

If you file, the case goes to evidence. Each step has a fixed period. Read them as a chain.

Opponent's evidence: two months. Within two months from service of a copy of your counter-statement, the opponent must either file affidavit evidence, or tell the Registrar and you in writing that they will rely on the facts in the notice (rule 45(1), Trade Marks Rules 2017). If the opponent does nothing in that time, the opposition is deemed abandoned (rule 45(2), Trade Marks Rules 2017).

Your evidence: two months. Within two months of receiving the opponent's affidavits (or their note that they will not file any), you must file your own evidence by affidavit. Or you must say that you rely on the counter-statement and on evidence you already filed (rule 46(1), Trade Marks Rules 2017). You must deliver copies to the opponent.

This is the second trap. If you take no action in that time, you are "deemed to have abandoned" your application (rule 46(2), Trade Marks Rules 2017). Filing a counter-statement does not protect you if you then go quiet.

Reply and further evidence. The opponent has one month from receiving your affidavits to file reply evidence (rule 47, Trade Marks Rules 2017). After that, no further evidence is left by either side. The Registrar may, if he thinks fit, give leave for more evidence on terms about costs or otherwise (rule 48, Trade Marks Rules 2017).

Hearing. After the evidence closes, the Registrar gives notice of the first hearing date. The date must be at least one month after the first notice (rule 50(1), Trade Marks Rules 2017). A party may ask for an adjournment on Form TM-M, with the fee, at least three days before the hearing. No party gets more than two adjournments, and each is at most thirty days (rule 50(2), Trade Marks Rules 2017). If you are absent on the adjourned date, the application may be treated as abandoned (rule 50(3), Trade Marks Rules 2017). If the opponent is absent, the opposition may be dismissed (rule 50(4), Trade Marks Rules 2017).

Decision. The Registrar decides after hearing the parties and considering the evidence, and decides "whether and subject to what conditions or limitations, if any, the registration is to be permitted." He may also take into account a ground of objection whether the opponent relied on it or not (s.21(5), Trade Marks Act 1999). The decision is communicated in writing to the address for service (rule 50(6), Trade Marks Rules 2017).

If you live outside India

If you neither reside nor carry on business in India, the Registrar may require you to give security for costs. If you fail to give it, he may treat the application as abandoned (s.21(6), Trade Marks Act 1999). The amount is whatever he considers proper, and he may raise it at any stage (rule 51, Trade Marks Rules 2017).

One application, several classes

If the opposition is filed only against some classes of a multi-class application, the other classes do not proceed to registration until you ask for division on Form TM-M and pay the divisional fee (rule 42(3), Trade Marks Rules 2017). If no opposition is filed in some classes, those classes can proceed after division (rule 42(4), Trade Marks Rules 2017). Decide early whether division suits your plans.

What not to do

• Do not ignore the notice because you think the opposition is weak. A weak opposition still ends your application if you do not answer. The deeming rule in s.21(2) does not look at the merits.
• Do not count from the day you read the email. Count from receipt, and remember that email service is deemed at the time of sending (rule 18(2), Trade Marks Rules 2017).
• Do not plan on an extension. Both extension provisions exclude times expressly given in the Act (s.131(1), Trade Marks Act 1999; rule 109(1), Trade Marks Rules 2017).
• Do not skip the evidence stage. Missing the two-month evidence window under rule 46 also means deemed abandonment (rule 46(2), Trade Marks Rules 2017).

What to do now

• Next step: find the notice of opposition and fix the date you received it. File your counter-statement on Form TM-O (rule 44(1), Trade Marks Rules 2017).
• Deadline: two months from receipt by you of the copy of the notice (s.21(2), Trade Marks Act 1999; rule 44(1), Trade Marks Rules 2017). Neither extension provision reaches it (s.131(1), Trade Marks Act 1999; rule 109(1), Trade Marks Rules 2017).
• Consequence of missing it: the application is deemed abandoned (s.21(2), Trade Marks Act 1999).

Have a CA review your facts before you act or file.

FAQs

1. I have not received any formal copy yet. Can I wait?
Do not wait if you already know about the opposition. The Registrar ordinarily serves the copy within three months of receiving the notice (rule 42(5), Trade Marks Rules 2017). If you file your counter-statement after seeing the notice on the official website, the formal service is not needed (proviso to rule 42(5), Trade Marks Rules 2017). Be careful: service can also be by email, and email service is deemed at the time of sending (rule 18(2), Trade Marks Rules 2017).

2. Can I ask the Registrar for more time to file?
The Act's general extension power does not cover times expressly provided in the Act (s.131(1), Trade Marks Act 1999), and the rule on extension says the same (rule 109(1), Trade Marks Rules 2017). The two-month period is in s.21(2) itself. Neither provision gives an extension for it.

3. What does the counter-statement have to contain?
It must say which facts alleged in the opposition you admit (rule 44(1), Trade Marks Rules 2017), set out the grounds you rely on (s.21(2), Trade Marks Act 1999), and be verified (rule 44(2), Trade Marks Rules 2017).

4. What if the opponent goes quiet?
If the opponent takes no action within two months of service of your counter-statement, the opposition is deemed abandoned (rule 45(2), Trade Marks Rules 2017). At hearing, an absent opponent on the adjourned date risks dismissal of the opposition (rule 50(4), Trade Marks Rules 2017).

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See Also

• Assigning a trademark when we sell the business
• Missed your trademark renewal? How to renew late or restore the mark
• Someone wants our unused trademark removed: what you can still do