Rule 43 of the Trademark Rules, 2017 specifies the contents of a notice of opposition (Form TM-O) filed under Section 21 of the Trademark Act,1999, within four months of the trademark’s publication in the Trade Marks Journal. The rule requires the notice to include the application number and goods/services being opposed, the applicant’s name, and a statement if the trademark is well-known. It also requires the details of the opposing party, including their own application number and trademark, and clearly states the grounds for opposition.
RULE 43(1)(a) OF TRADE MARKS RULES, 2017
Rule 43(1) of the Trade Marks Rules mandates presence of several details pertaining to the opposition, opponent and trademark application. Details regarding which have been provided below.
Rule 43(1)(a) of the Trade Marks Rules requires the following details about the trademark application being opposed:
- Application number of the trademark that is being opposed.
- Goods or Services listed in the opposed trademark application.
- Name of the applicant who filed that trademark.
RULE 43(1)(b) OF TRADE MARKS RULES, 2017
Rule 43(1)(b) of the Trade Marks Rules stated that when a notice of opposition relies on an earlier trademark or earlier right, the opponent is required to furnish specific details about that earlier mark or right. The person who filed the notice of opposition (Opponent) must disclose the following information relating to their prior trademarks:
a) Status of trademark: The opponent is required to disclose the current status of their trademark, including whether it is an existing application or a registered mark.
b) Details of trademark: The opponent must also submit specific information about their trademarks, such as the application number, the filing date, and the date from which the trademark has been in use.
c) Well-known trademark: if the opposition relies on an earlier trademark that qualifies as a well-known mark under Section 11(2) of the Trade Marks Act,1999, the opponent must supply relevant information establishing that status and identifying the well-known trademarks.
d) Reputed trademark: if the opposition is founded on an earlier trademark that has a reputation U/S 11(2)(b) of the Trade Marks Act,1999 the opponent must furnish details supporting that claim and specify whether the reputed mark is already registered or still awaiting registration.
e) Description of the trademark: The opponent must submit a representation of their earlier trademark. Where necessary, a short description of the earlier mark or any other prior rights should also be included.
f) Goods and services: the opponent is required to specify all the goods and services for which the earlier trademark is protected.
RULE 43(1)(c) OF TRADE MARKS RULES, 2017
Rule 43(1)(c) of the Trade Marks Rules states that the notice of opposition must contain information regarding the opposing party. Sub rules of this provisions mandate:
a) Opposition by the proprietor of an earlier Trademark or Right: if the opposition is filed by the owner of the earlier trademark or earlier right, the opponent must provide:
- Their name and address, and
- A statement confirming that they are the proprietor of that trademark or right.
b) Opposition by a Licensee (Not a Registered User): If a licensee who is not a registered user files the opposition, they must provide:
- Their name and address, and
- A statement confirming that they are authorized to file the opposition.
c) Opposition by a successor-in-title (Not yet Registered as Proprietor): if the opposition is filled by someone who has taken over ownership of the trademark but is not yet recorded as the new proprietor, they must provide:
- A statement that they are the successor-in-title,
- Their name and address, and
- The date on which the application for registering them as the new proprietor was received by the Trademark Office (or the date it was sent, if the receipt date is not known).
d) Opponent with No Place of Business in India: if the opponent does not have a business address in India, they must provide:
- Their name, and
- An address for service in India.
Rule 43(1)(d) of the Trade Marks Rules provides that the notice of opposition must clearly state the specific grounds on which the opposition is being filed.
Note: A notice of opposition may be submitted on absolute grounds of refusal, relative grounds of refusal, or on both grounds.
RULE 43(2), 43(3) AND 43(4) OF TRADE MARKS RULES, 2017
Verification of the notice of opposition: Rules 43(2), 43(3), and 43(4) of the Trade Mark Rules provide provisions related to the verification of the notice of opposition.
a) Requirement of verification: Rule 43(2) of the Trade Marks Rules requires that the notice of opposition must include a verification at its foot. This verification must be completed and signed by the opponent or by their authorized agent.
b) Contents of verification: under this rule, the individual verifying the notice must clearly indicate which specific numbered paragraphs are confirmed based on their personal knowledge and which are verified based on information received and believed to be true.
c) Signature, Date and Place: As per Rule 43(4), the verification section at the end of the notice of opposition must be signed by the person making the verification. The verifier must also clearly state the date and place where the verification was completed.[i]
CONCLUSION
Rule 43 of the Trade Marks Rules, 2017 plays a crucial role in ensuring that a notice of opposition is complete, transparent, and procedurally valid. It clearly specifies the mandatory details that must be provided by the opponent, ranging from information about the opposed trademark, particulars of the opponent’s earlier rights, complete identification of the opposing party, and precise grounds of opposition. Additionally, the verification requirements under 43(2), 43(3), and 43(4) ensure the authenticity and credibility of the statement made in the notice.
Read similar article here: Complete Guide to Section 21 Trademark Opposition – J.P. Associates
Author- Priyanshi Tiwari, 5th Year Law Student, Prestige Institute of Management and Research, Gwalior
[I] RULE 43 OF THE TRADE MARK RULES, 2017: REQUIREMENTS OF NOTICE OF OPPOSITION