Trademark Services

Service Details:

Trademark Opposition

Trademark opposition in India comes at a stage after the registrar has approved the trademark application on the grounds of distinctiveness and published the third-party opposition's trademark in the journal.

Eligibility

According to Section 21 of the Trademark Act, 'any person' can oppose a trademark, irrespective of their commercial or personal interest in the matter.

A trademark can be countered by filed by a customer, member of the public or competitor, or any other person. Also, the person filing the trademark opposition needs to be a prior registered trademark owner.

After a trademark opposition is filed, both parties need to conclude whether the trademark should be abandoned or registered

Anyone who believes that the published mark might create confusion among the public can file for the opposition while defending the trademark lies in the trademark registrant's hands.

Grounds For Trademark Opposition

The Indian trademark law does not provide any specific grounds of opposition. There are various reasons a trademark opposition may be opposed mentioned below:

• The trademark is similar or identical to an earlier or existing registered trademark.
• The trademark is devoid of distinctive character.
• The trademark is descriptive.
• The trademark registration application is made with bad faith.
• The trademark is customary in the current language and or in the established practices of a business.
• The trademark is likely to deceive the public or cause confusion.
• The trademark is contrary to the law or prevented by law.
• The trademark is prohibited under the Emblem and Names Act, 1950.
• The trademark contains matters that are likely to hurt any class or section of people's religious feelings.

Procedure for Trademark OppositionOpposition Notice

Within four months of the first date of appearance, any person may file a notice of opposition to a trademark that appears in the trademark journal.

It must be filed on Trademark Form 5 in the prescribed format and with the applicable fees.

Counter-Statement

The trademark registrar would serve a copy of the trademark opposition notice to the trademark applicant after the trademark opposition notice was filed with the registrar. The trademark applicant must file the counter statement within two months of receiving the opposition notices.

The trademark application will be "abandoned" if the trademark applicant fails to file the counter statement within the specified time frame. However, it is necessary to understand the status of trademark registration.

Hearing

After the evidence filing stage, the registrar shall send notices to both parties stating the date of hearing, which shall be at least one month after the date of the first notice. The hearing is based on the opposition notice, counter-statement filing, and evidence submitted. The registrar hears the case, and if any of the parties fails to appear for the hearing, the registrar will rule against them.

Appeals

The registrar decides whether the opposition was successful based on a review of the evidence submitted and a hearing of both parties, and thus whether the trademark should be registered or not. However, a party who is dissatisfied with the registrar's decision may appeal it to the Intellectual Property Appellate Board.

Additional Information:

• Item Code: 001
• Production Capacity: Customise
• Delivery Time: 7 Days
• Packaging Details: Customise

Service Details:

Trademark - Counter Statement to the OppositionWhat is a Counter-Statement? A counter-statement is the reply to the notice of opposition, which must be filed by the applicant within two months of receipt of the notice of opposition by way of Form TM-O. The provision of filing an extension to file a counterstatement has been done away with. Accordingly, if the applicant fails to file its counter statement with two months of service of the opposition, its trademark is deemed to have been abandoned for non-prosecution. Alternatively, if the applicant files the counter-statement, the opposition will proceed to the evidence stage. After submission of the counter-statement, the registrar shall upon review and if all the formalities are met, serve a copy of the counter-statement on the opponent ordinarily within two months from the date of receipt of the same. Then, the opponent is required to file the evidence in support of his opposition and upon receipt of such evidence, the applicant will file evidence in support of the application and the matter will be referred for the hearing. If the opponent does not file any evidence, the opposition will be deemed to be abandoned. 

The counter-statement shall typically comprise the following:
1. Set out the facts, if any facts alleged in the notice of opposition are admitted by the applicant.
2. A paragraph-wise counter of each of the grounds made in the notice of opposition.

3. The counter-statement shall be verified at the foot by the opponent or by his duly authorized agent who shall specifically state, referring to the numbered paragraphs of the notice of the opposition, what he verifies of his own knowledge and what he verifies upon information received and believed to be true.
4. The verification shall be signed by the person making it and shall state the date on which and the place at which it was signed.

Service Details:

Trademark Renewal

A trademark is used by a business to distinguish its goods or services from other similar goods or services from a different business. The trademark symbols, logos, labels, names are represented with an “R” at the end. A trademark can be registered under the Trade Marks Act, 1999. The trademark cannot be registered if it is found offensive, non-distinct and contains government emblems.

The validity period of trademark in India is for a period of 10 years as per section 25 in the Trade Marks Act, 1999. On 6th March 2017, Government of India (GOI) notified new Trade Mark Rules, 2017, to streamline the application process, create benchmarks for filing trademark applications, promote e-filing and simplify the registration process.

The registered trademark can be renewed for another 10 years with proper documentation and meeting the required criteria. Let us have a look at the procedures to the renewal and restoration of trademarks in this article.

Renewal of a TrademarkDuration to renew a Trademark

• The renewal can be filed within one year prior to the date of expiry as per rules 57 and 58 in Trade Mark rules 2017.
• The renewal can be filed within six months prior to the date of expiry as per rules 63 and 64 in Trade Mark rules 2002.
• The renewal can also be filed within six months after the date of expiry.

Negligence to renew a mark within six months after the date of expiry will lead to the removal of the mark from the Register of Trademarks.

Additional Information:

• Delivery Time: 24 Hours

Required Documents for Trademark Objection Reply Filing 1 Basic Documents Copy of Trademark Examination Report (issued by Registry) Trademark Application Copy (Acknowledgement / Receipt) Power of Attorney (Form TM-48, signed by applicant) 2 Applicant�s Proof (as per entity type) Individual / Proprietor ? PAN + Aadhaar Partnership / LLP ? Partnership Deed / COI Private / Public Company ? COI, MOA, AOA Trust / Society ? Registration Certificate 3 Usage Proof of Trademark (if claiming "Used Since") Invoices, Bills, Purchase Orders Advertisement Copies (Newspapers, Magazines, Pamphlets, Brochures) Social Media Promotions, Website Screenshots Domain Name Registration (if brand name used in website) Product Packaging / Labels / Photographs Registration Certificates from other authorities (if available) 4 Supporting Legal Documents Affidavit of Use (on stamp paper, notarized � showing use of mark with evidence) Any previous IP (Copyright / Design / ISO / FSSAI / GST) license showing brand name MSME / Startup India Certificate (if applicable, for brand recognition support) 5 Detailed Reply Draft (Prepared by Agent/Attorney) Arguments against Objection (under Section 9 � descriptive marks OR Section 11 � similarity/confusion) Supporting Case Laws / Evidence references ? Summary Checklist for Trademark Objection Reply: Copy of Examination Report Trademark Application Copy + TM-48 (POA) Applicant ID & Business Proof Usage Proofs (Invoices, Ads, Website, Packaging, etc) Affidavit of Use (if required) Drafted Reply with Legal Arguments

Phase 1: For the Trademark Hearing Itself You must have these documents prepared and organized for the hearing, whether it is in-person or virtual Hearing Notice: The official notice you received from the Trademark Registry scheduling the date and time of the hearing This is your entry ticket to the proceeding Power of Attorney (Form TM-M): Mandatory if you are being represented by a trademark attorney or agent It must be on record Written Submissions: A concise summary of your arguments This document should clearly state why the objections should be waived, referencing the evidence and any supporting case laws It's best practice to file this with the Registry just before the hearing Complete Evidence File: An organized compilation of all the evidence you have submitted to prove your trademark's distinctiveness and usage This includes: Invoices and sales records Advertisements and marketing materials Packaging, labels, and website screenshots Any other document that supports your "Affidavit of Use" Supporting Case Laws: Printed copies of any previous court or tribunal judgments that you are citing to support your legal arguments Phase 2: Immediately After a Successful Hearing If the Hearing Officer is convinced by your arguments and evidence, they will accept your trademark Order of the Hearing Officer: The officer will pass an order to accept the mark This leads to the next document Letter of Acceptance: You will receive a formal communication (usually via email) from the Registry confirming that your trademark application has been accepted and will be advertised in the Trade Marks Journal Phase 3: Post-Acceptance Journey to Registration Acceptance after a hearing is a major milestone, but a few steps remain Publication in the Trade Marks Journal: Your trademark will be published in the official journal This is not a document you receive directly but a public notification to allow third parties to oppose your mark Registration Certificate: If no one files an opposition within four months of the publication date (or if an opposition is decided in your favour), the trademark will proceed to registration You will then receive the final Trademark Registration Certificate, which is now issued digitally and sent via email This is the ultimate proof of your ownership

Essential Documents & Information Notice of Opposition (Form TM-O): This is the primary document for initiating an opposition It should be filed within four months from the date the trademark is advertised in the Trade Marks Journal Authorization Document (Power of Attorney): If you are being represented by a trademark attorney or agent, a signed Power of Attorney (Form TM-M) must be filed, authorizing them to act on your behalf Affidavit and Evidence: While not required at the initial filing of the Notice of Opposition, you will need to submit evidence in the form of an affidavit to support your claims later in the process This evidence can include: Proof of your prior use of a similar or identical trademark Invoices, marketing materials, and advertisements showing your mark in commerce Documents establishing your brand's reputation and goodwill Any other evidence that supports the grounds of your opposition Information to be Included in the Notice of Opposition (Form TM-O) Your Notice of Opposition must clearly state the grounds on which you are opposing the trademark application These grounds are typically based on sections 9 and 11 of the Trade Marks Act, 1999, and can include: The proposed trademark is identical or deceptively similar to your existing trademark The mark is descriptive and not distinctive The application was made in bad faith The mark is likely to cause confusion among the public The mark is contrary to law or morality Filing Procedure Overview Filing the Notice of Opposition: Any person can file a Notice of Opposition (Form TM-O) with the Registrar of Trademarks within four months of the trademark's publication in the journal Counter-Statement: The trademark applicant is then required to file a counter-statement (also on Form TM-O) within two months of receiving the notice of opposition Evidence Submission: The opponent (the one who filed the opposition) gets an opportunity to provide evidence in support of their opposition, usually within two months of receiving the counter-statement Subsequently, the applicant can also submit evidence in support of their application Hearing: Once the evidence stage is complete, a hearing may be scheduled where both parties can present their arguments before the Registrar Decision: After the hearing, the Registrar will decide whether to register the trademark or refuse it based on the arguments and evidence presented Associated Fees Filing Notice of Opposition (Form TM-O): The government fee for e-filing is ?2,700, and for physical filing, it is ?3,000 Filing Counter-Statement (Form TM-O): The fee for the applicant to file a counter-statement is also ?2,700 for e-filing and ?3,000 for physical filing

Key Documents for the Hearing You should have these documents organized and ready, whether the hearing is in-person or virtual Hearing Notice: The official notice you received from the Trademark Registry that schedules the hearing This is the most crucial document Power of Attorney (Form TM-M): This is mandatory if you are represented by a trademark attorney or agent It's the document that authorizes them to appear on your behalf Affidavit of Use: A sworn statement detailing the history of your trademark's usage It should clearly state the date of the first use of the mark in India This affidavit acts as the foundation of your argument Evidence of Use: This is the most critical part of your case You need to provide substantial proof that your trademark has been actively used in commerce This includes documents like: Invoices and bills showing sales under the trademark Advertisements and promotional materials (brochures, flyers, newspaper ads, social media campaigns) Packaging materials and labels with the trademark clearly visible Screenshots of your website or online listings featuring the trademark Media mentions or articles about your brand/product Copy of the Examination Report and Your Reply: Bring a copy of the report issued by the Trademark Examiner that raised the initial objections, along with the detailed reply you filed in response This provides context for the issues being discussed Letter of Authorization: If an employee of the company (who is not an attorney/agent) is attending, they'll need a letter from the company's director authorizing them to appear at the hearing Additional Supporting Documents While not always mandatory, these documents can significantly strengthen your case Supporting Case Laws: If your argument relies on previous legal decisions (precedents), have printed copies of those judgments ready to submit Business Registrations: Documents like your company's Certificate of Incorporation, GST registration, or MSME certificate can help establish the legitimacy and operational history of your business Public Recognition Evidence: Any awards, certifications, or unsolicited customer testimonials that show public recognition of your brand ? Pro-Tips for the Hearing Organize everything: Arrange all documents chronologically in a well-labeled file It shows professionalism and helps you find things quickly Bring multiple copies: Always carry at least two sets of all documents � one for the Hearing Officer and one for your own reference Be prepared: Know the facts of your case inside and out Be ready to clearly and concisely explain why your trademark deserves to be registered, referencing your evidence

Stage 1: Responding to the Objection This is the most critical stage where you need to present your case in writing Examination Report: This is the document you receive from the Trademark Registry It is not something you prepare, but it is the most important document to have, as it details the specific objections (eg, under Section 9 or Section 11 of the Trade Marks Act) that you need to address Reply to the Examination Report (Counter Affidavit): This is the formal, written response you must file There is no specific government form for this, but it must be a detailed legal document that includes: A point-by-point rebuttal to each objection raised by the examiner Legal arguments and citations of relevant case laws (precedents) that support your claim for registration A strong assertion of how your trademark is distinctive and not confusingly similar to other marks Evidence of Use / Acquired Distinctiveness: This is the most crucial part of your reply You must attach documentary proof to your reply to show that the trademark is uniquely associated with your business This evidence includes: Invoices showing sales under the trademark Advertising and marketing materials (brochures, social media campaigns, newspaper ads) Packaging and labels with the trademark prominently displayed Website screenshots and online presence Affidavits from people in the trade or from the public confirming they recognize the mark as yours Details of sales turnover and promotional expenses related to the brand Stage 2: The Trademark Hearing (if required) If the examiner is not satisfied with your written reply, a hearing will be scheduled Hearing Notice: The official communication from the Registry scheduling the hearing Written Submissions: A neatly compiled summary of your arguments and all the evidence you are relying on It's good practice to file this before the hearing Power of Attorney (Form TM-M): If an attorney is representing you, they must have this on record All Submitted Evidence: You must have a complete, organized file of all the evidence (invoices, ads, etc) that you have already submitted, ready to present to the Hearing Officer Stage 3: Acceptance Once the examiner or Hearing Officer is satisfied with your reply and evidence, they will accept the mark Letter of Acceptance: You will receive a formal communication (usually via email) stating that your mark has been accepted and will be published in the Trade Marks Journal Registration Certificate: After the mandatory 4-month opposition period following publication, if no opposition is filed, you will receive the final Trademark Registration Certificate

Here are the key "documents" and pieces of information you'll need to provide for a logo design project intended for trademarking: 1 A Detailed Design Brief: This is the most crucial document It's a comprehensive overview of your brand that guides the designer A good design brief for a trademarkable logo should include: Your Brand's Name: The exact wordmark or name the logo will represent Brand Mission & Values: What does your company stand for? What is your core philosophy? Target Audience: Who are you trying to reach? (eg, age, demographics, interests) Industry & Competition: Describe your industry and provide examples of your main competitors' logos This helps in creating a unique design that stands out Aesthetic Preferences: Specify your preferred style, colors, and any elements you want to include or avoid (eg, modern, classic, minimalist, bold, specific colors, no gradients) Key Message or Feeling: What do you want people to feel when they see your logo? (eg, trust, innovation, luxury, fun) 2 A High-Resolution Version of Your Brand Name: While the designer will likely typeset the brand name themselves, providing the exact spelling and capitalization of your wordmark is essential 3 Visual References & Inspiration: This is not a formal document, but a collection of images, logos, and designs that you like You can create a mood board or a Pinterest board to share with your designer This helps them understand your vision without you having to use complicated design terminology 4 A Description of Goods and Services: This is absolutely critical for trademark purposes You must clearly define the products or services your logo will be used for A professional designer will use this information to create a logo that doesn't inadvertently infringe on an existing mark in a similar class For example, a stylized "A" logo for a tech company might be perfectly fine, but an identical "A" logo for an apparel company could be a problem 5 Legal and Trademark Search Reports (Optional, but highly recommended): Before you finalize and start using your logo, it's a best practice to have a professional trademark search conducted If you have already done this, share the results with your designer This information helps them create a design that has the best chance of being unique and registrable, avoiding any potential conflicts with existing marks 6 Ownership and Licensing Agreement (The "Legal Document"): This is a formal agreement that you'll sign with your designer It's crucial for trademark purposes The agreement should explicitly state that upon payment, you (the client) receive full ownership of the final logo files, including the right to use and trademark the design Without this, the designer could retain ownership, which would prevent you from legally trademarking the logo

Stage 1: Initial Application Filing (Form TM-A) This is what you need to get your application started Trademark Application (Form TM-A): This is the main application form containing all your details Power of Attorney (Form TM-M): This is only required if you are hiring a trademark attorney or agent to file on your behalf It should be on ?100 non-judicial stamp paper Identity and Business Proof: The document depends on who is applying: Individual or Sole Proprietorship: A copy of your PAN Card or Aadhar Card Partnership Firm: The registered Partnership Deed Company or LLP: Certificate of Incorporation issued by the Ministry of Corporate Affairs Logo/Device File: If your trademark includes a logo, device, or has a specific stylization, you need to provide a clear JPEG or PNG image of it User Affidavit (if applicable): If you claim to have been using the trademark before the date of filing, you must submit a signed affidavit stating the date of first use You should also have supporting documents ready, such as: First invoices Old advertisements Website screenshots Any other dated proof of use MSME / Startup India Certificate (if applicable): To avail the 50% discount on the government filing fee, you must provide your MSME registration certificate or the certificate of recognition from the DPIIT for startups Stage 2: During Examination & Hearing After filing, a Trademark Examiner will review your application If they raise any objections, you'll need to respond Reply to Examination Report: This is a written response detailing your legal arguments against the objections raised by the examiner While there's no specific form, it's a formal document often prepared by an attorney Evidence of Acquired Distinctiveness: If the objection is that your mark is not distinctive, you will need to submit substantial evidence of use (invoices, advertisements, sales figures, media articles) to prove that the public associates the mark exclusively with your business Hearing Notice & Written Submissions: If a hearing is scheduled, you'll need the Hearing Notice and a prepared document of your Written Submissions, along with all the evidence you are relying on Stage 3: Acceptance & Registration Once your mark is accepted and published, and if no one opposes it within four months, it proceeds to registration Registration Certificate: No further documents are required from your end at this stage You will receive the Trademark Registration Certificate issued by the Registry This is now typically sent digitally via email

Here are the key details and "documents" required for a trademark search report: The Proposed Trademark: This is the core of the search You need to provide the exact trademark you want to search This could be: A Wordmark (the brand name, slogan, or a combination of words) A Logo or Device (a high-resolution image of the design or symbol) A combination of both Description of Goods and Services: This is a critical piece of information You must clearly define the products or services your trademark will be used for This helps in determining the correct trademark class (based on the Nice Classification system, which has 45 classes for goods and services) and searching for similar marks within those relevant classes Applicant's Details: You will need to provide the name and a brief description of the applicant (individual, partnership firm, company, etc) This information is necessary for the professional creating the report to correctly identify the owner of the potential trademark Date of First Use (If applicable): If you have already started using the trademark in the market, you must provide the date of its first use This can be important for establishing "prior use" rights Supporting evidence, such as invoices, marketing materials, or advertisements showing the trademark in use, may also be required

Here are the key "documents" and pieces of information you'll need for trademark renewal in India: 1 Form TM-R This is the official application form for trademark renewal The form requires you to provide details of the trademark, including its registration number, class, and the name and address of the registered proprietor This form is a mandatory requirement 2 Copy of the Trademark Registration Certificate You will need a copy of the original trademark registration certificate This document contains all the essential details of the registered mark, which are necessary for filling out the renewal application 3 Copy of the Original Trademark Application (Form TM-A) In some cases, a copy of the original application form (Form TM-A) used for the initial trademark registration may be required This helps verify the details of the original application 4 Details of the Registered Proprietor You must provide the current details of the trademark owner, which may include: Name of the applicant: This can be an individual, a company, a partnership firm, etc Address and contact information: Current address, email, and mobile number PAN Card and Address Proof: For identity verification 5 Power of Attorney If you are using an attorney or a trademark agent to file the renewal application on your behalf, you must provide a signed and stamped Power of Attorney This document authorizes the agent to act on your behalf before the Trademark Registry 6 Payment of Fees The renewal process requires the payment of an official government fee The fees can vary depending on whether the application is filed online (e-filing) or physically Normal Renewal: The application must be filed within one year before the expiration date Late Renewal with Surcharge: A grace period of six months after the expiration date is available However, this requires the payment of an additional surcharge fee Restoration: If the trademark has been removed from the register due to non-payment of renewal fees, a restoration application can be filed within a specific period (usually six months to one year after the expiration) by paying a higher fee