Trademark Opposition
- Art Teacher
- London, UK
- 5-7 Hrs
Just when you think your trademark is on its way to registration, you may hit another roadblock—trademark opposition. After your mark is published in the official Trademark Journal, third parties have the right to challenge it if they believe it conflicts with their existing brand. This stage is known as the opposition period, and it’s a crucial part of the registration process. Unlike objections (which come from the trademark office), oppositions are filed by other businesses or individuals. Common grounds include claims that your trademark is confusingly similar, deceptive, or filed in bad faith. If an opposition is filed, your application is put on hold until the dispute is resolved. You’ll need to submit a counterstatement, defend your case, and possibly go through a hearing or submit evidence. It’s a formal legal process—almost like a mini courtroom battle. That’s why legal strategy and professional support matter here more than ever.
- Notice of Opposition – A formal document stating legal grounds for opposing the mark
- Supporting Evidence – Proof of prior trademark use, registration certificates, invoices, advertising materials, etc.
- Affidavit of Use – Sworn statement confirming prior use of the opposing mark (if applicable)
- Power of Attorney – If filed through a trademark attorney
- Counterstatement (by applicant) – Response to the opposition, addressing the claims made
- Additional Evidence (by both parties) – Submitted during the evidence stage, including witness statements or market proof
- Publication: Trademark is published in the official journal.
- Opposition Filing: Any third party can file a Notice of Opposition within 4 months (India) or 30 days (U.S.) from publication.
- Counterstatement: Applicant must file a reply within 2 months (India) or 30 days (U.S.) of receiving notice.
- Evidence Stage: Both parties submit affidavits and evidence to support their case.
- Hearing: A registrar may call for a hearing to hear both sides.
- Decision: The registry decides whether to accept or reject the opposition.
- Appeal (optional): Either party can appeal the decision to the High Court or TTAB (U.S.).
FAQs
Grounds not pleaded in the original notice of opposition (Form TM-O) cannot be introduced later. Introducing new grounds violates principles of natural justice and may render the opposition defective.
Under Rule 50, amendments are allowed but subject to the Registrar’s discretion. The amendment must not change the nature of the opposition or introduce new grounds, especially after the counterstatement is filed.
Yes, two or more people having the same issue against the same trademark can join together as opponents and file a joint opposition
Yes, opposition can be filed against series trademarks and multiclass applications. In the case of multiclass applications, an opposition can be raised for the trademark as a whole or specifically against its use in one or more particular classes.
Yes, an opposition can be withdrawn after it has been filed. Withdrawing an opposition generally ends the proceedings unless another party has also filed opposition for the same mark