Executive Summary

Trademark opposition is a formal legal proceeding initiated by a third party after a trademark is advertised in the Trademark Journal. Unlike an examination objection raised by the Registry, opposition is adversarial in nature and involves pleadings, evidence and hearing.

Legal Basis

Opposition usually arises where the opponent alleges that the proposed mark:

  1. is identical or deceptively similar to its earlier mark;
  2. is likely to cause confusion;
  3. was adopted dishonestly;
  4. is descriptive or non-distinctive;
  5. violates prior user rights;
  6. amounts to passing off;
  7. conflicts with a well-known mark.

Opposition Proceeding Flow

Trademark Advertised
        ↓
Notice of Opposition
        ↓
Counter Statement
        ↓
Opponent’s Evidence
        ↓
Applicant’s Evidence
        ↓
Reply Evidence
        ↓
Hearing
        ↓
Order

Integrated Legal Principles

The principle in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. is often relevant in opposition matters because the authority must assess likelihood of confusion. The test is not confined to exact similarity. Phonetic, visual and conceptual resemblance are relevant.

In Laxmikant V. Patel v. Chetanbhai Shah, the Supreme Court recognised the protection of goodwill through passing off. Therefore, even an unregistered prior user may oppose or challenge the adoption of a later mark if goodwill and misrepresentation are established.

In Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, the Supreme Court applied the territoriality principle and held that trans-border reputation must be established in India. This is relevant where an international brand alleges reputation in India.

Applicant’s Defence Strategy

The applicant may defend opposition by showing:

  1. independent and honest adoption;
  2. dissimilarity of marks;
  3. dissimilarity of goods/services;
  4. different trade channels;
  5. no likelihood of confusion;
  6. prior use by applicant;
  7. coexistence in the market;
  8. weakness of opponent’s mark;
  9. territorial limitation of opponent’s reputation;
  10. absence of bad faith.

Conclusion

Trademark opposition is a serious proceeding. It may determine whether the brand proceeds to registration or remains vulnerable. A strong counter-statement and evidence strategy are critical.