trademark-opposition-tricks

17-Aug-2024 By Businessmitra

Trademark Opposition Tricks 2024 in India

Point-wise Does and Don’ts in Trademark Opposition

This guide will help you in understanding the process, procedure and tricks of drafting and filing Trademark Opposition on an Accepted and Advertised Trademark.

First and foremost there must be a genuine cause or actual interest in the advertised trademark for filing Trademark Opposition.

Vague, vexatious, baseless and un-substantiated opposition usually fail.

This guide will properly walk you through the justified and genuine opposition proceedings with tricks for successful opposition proceedings.

Substantiated and reasoned Oppositions

Substantiated and reasoned opposition proceedings usually have a higher success rates than baseless and unjustified opposition. So there must be a reasonable ground for opposition.

How to determine the substantial or reasoned facts for Trademark Opposition

You may decide substantial or reasoned facts for Trademark Opposition upon following points:-

Check actual similarity or deceptive similarity of the advertised trademark with your mark
Check whether there shall me confusion in general public, consumers, trade members and Trade channels
Check whether there are same class of consumers, sales counters, Trade members and trade channels
Check whether there will be actual loss and damages and dilution of your goodwill and reputation associated with your trademark.
Check whether the intention of adoption and uses of the advertised mark is dishonest and mala-fide.
Check whether the advertise mark has been adopted just to ride upon your goodwill and reputation and to earn profits out of your hard-earned goodwill and reputation.
Check whether there is a malafide adoption and uses of the applied mark with an aim to associate itself with your Trademark.
Check whether the advertised mark appears like coming out of your company / firm /Organization.

If the answers of any of the abovementioned point are in yes you should not hesitate to file an opposition Proceedings

When to not file an Opposition and when Opposition proceedings fail

Check whether the advertised mark has an actual prior uses and adoption.
Check whether the advertised mark has been adopted honestly and concurrently and used fairly.
Check whether the intention of adoption and uses of the advertised mark is honest and bonafide.
Check that there are no chances of confusion between your Trademark and the advertised mark.
Check that the advertised trademark will not cause loss and damages to the goodwill and reputation associated with your Trademark.
Check that the appearance, sound and connotation of the advertised Trademark is completely different and distinctive.
Check whether the advertised mark has its own identity and distinctiveness that it does not appear to hvae origin with your organization.

If the answer of any one of the above mentioned points are in yes then the chances of successful opposition are less.

Note- However a good Number of oppositions are successful due to not being contested by the applicants of the advertised mark.

The opposition proceedings and contest by the applicant of the applied mark involves a good amount and applicants usually feels that it's better to apply a new trademark rather than contesting the opposition proceedings.

Tricks of Drafting Trademark Opposition and Points to take care

Clearly mention the applicant details with name and address along with advertised mark details with Trademark application number, Trademark / wordmark / Logo / Device.
Clearly mention the opponent details with name, address.
Write a Brief background and introduction of the opponent.
Set out the grounds of opposition point-wise and para-wise.
Never use exaggerated facts and figures.
Remain on the genuine ground and causes of the opposition.
Mention the points which cause confusion between the rival marks
Mention Trademark laws and section