Form TM-O: filing a trademark opposition or counter-statement

Opposition: who can file and when

Any person can oppose an application after it is advertised in the Trade Marks Journal, not only the owner of a conflicting mark. The notice of opposition in TM-O must be filed within four months from the date of advertisement or re-advertisement. This period cannot be extended.

Grounds usually include similarity to an earlier mark, likelihood of confusion, bad faith, lack of distinctiveness, descriptiveness, and prior use by the opponent. The notice must set out the grounds clearly, as new grounds cannot easily be added later. Evidence of earlier use in India carries significant weight.

Counter-statement by the applicant

The Registry serves the notice of opposition on the applicant. The applicant must file a counter-statement in TM-O within two months of receiving it. If no counter-statement is filed in time, the application is treated as abandoned under section 21(2).

The counter-statement responds to each ground, explains the applicant's adoption and use of the mark and may point out weaknesses in the opponent's rights. It is served on the opponent, and the evidence stage follows.

The two-month period runs from receipt of the notice, so keep the address for service and email on record up to date. Missing the notice because it went to an old address does not automatically excuse the delay.

Official fees

The same form and fee also apply to applications for rectification of the register. Rectification is the route to challenge a mark already on the register, for example for non-use.

Before you oppose

Opposition is a contested proceeding and can take time to conclude. Before filing, gather evidence of your own use and reputation, such as invoices, advertisements, sales figures and online presence. Consider whether a cease-and-desist letter or negotiation with the applicant might achieve the same result faster. If you are the applicant, review the opponent's mark and history early, as a quick settlement on goods descriptions may save your application.

Evidence and hearing

After the counter-statement, the opponent files evidence in support by affidavit, the applicant files evidence in reply, and the opponent may file rebuttal evidence, each within time limits set by the Rules. The matter is then listed for hearing before a hearing officer, who decides whether the mark proceeds to registration. Settlement is common. Parties often agree on coexistence or narrowing the goods description, after which the opposition is withdrawn.

Common mistakes and consequences

For opponents, the biggest mistake is missing the four-month window, as it cannot be extended. For applicants, failing to file the counter-statement within two months results in abandonment. Other errors include vague grounds, no evidence of prior use or reputation, and missing evidence deadlines, which can lead to the opposition or application being treated as abandoned. Monitoring the Trade Marks Journal for marks similar to yours is the practical way to catch conflicting applications in time.

Step by step

1. 1Monitor the Journal

   Watch weekly Trade Marks Journal advertisements for conflicting marks.

2. 2Assess grounds

   Compare marks, goods and prior use to decide whether to oppose.

3. 3File TM-O

   File the notice of opposition with grounds within four months.

4. 4Counter-statement

   The applicant files its reply in TM-O within two months of the notice.

5. 5Evidence

   Both sides file evidence by affidavit within the prescribed times.

6. 6Hearing or settlement

   Attend the hearing or settle and withdraw.