Settle and Save
The slow pace of India’s trademark opposition regime can make settlement a good option, explain Manisha Singh and Omesh Puri of LexOrbis (India).
India has a sound statutory framework for trademark oppositions. Any person, which includes individuals, companies, partnership firms, and trusts, can file a notice of opposition within four months from the advertisement of the trademark in the weekly Trade Marks Journal.
The opposition is then served on the applicant and within two months of receipt of the same, the applicant must file a counter statement to avoid abandonment of the application. The procedure is carried further with the filing of the evidence by the parties in support of their opposition/application.
The parties are also given the option to file a letter of reliance in lieu of the evidence, which they may choose to rely on for the contents of their respective pleadings. The option of filing rebuttal evidence is also given to the opponent. Once the pleadings are completed, the matter is listed before the registrar for an oral hearing on merits and then the decision is issued. Such decisions can be appealed before the High Court within three months of receipt of the order.
The Grounds Available to the Opponent in an Opposition
In terms of the grounds which the opponent has at its disposal for filing an opposition, the Trade Marks Act 1999 can be termed as a robust statute since the Act contains both “absolute” and “relative” grounds. In filing an opposition on the basis of absolute grounds, the opponent may attack the applied mark on its lack of inherent distinctiveness, or that the applied mark is not distinctive or not capable of distinguishing the goods/services of the applicant from those of others.
By way of the same, the opponent is restricting the applicant from obtaining registration of a mark which is not distinctive, is generic, is descriptive, or will lead to creating a monopoly if the same is granted registration in the name of one party.
Regarding the relative grounds of refusal, the opponent can place reliance on its prior rights in an earlier adopted trademark. The opposition can be based on relative grounds if:
- The applied mark is identical/similar to the opponent’s earlier trademark and the goods/services of the applied mark are identical/similar to the goods/services for which the earlier mark is applied/registered for and due to the same, there exists a likelihood of confusion on the part of the public, which includes the likelihood of false association.
- The goods/services of the applied mark are not identical/similar to the goods/services for which the opponent’s earlier trademark is registered, the opposition can be based on the ground that the opponent’s trademark is a “well-known” trademark in India, and the use of the later mark without due course would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.
- The opponent does not have a prior registration/application of its mark in India; the opponent may also rely on its prior common law rights in the trademark; and the opposition can be based on the ground that the applied mark is barred from registration under the law of “passing off.”
- The “bad faith” of the applicant in filing the application is also available as one of the grounds to the opponent.
- There is infringement of the copyright of the opponent’s artistic/device mark.
“Regarding the relative grounds of refusal, the opponent can place reliance on its prior rights in an earlier adopted trademark.”
Manisha Singh (pictured) and Omesh Puri, LexOrbis (India)
Role of ‘Transborder Reputation’ in Opposition Proceedings
The robustness of the statutory framework surrounding opposition proceedings in India is evident from the fact that, even if the opponent does not have a prior trademark registration or application in India, nor direct commercial use, the grounds of refusal provided under the Act are wide enough to safeguard a party’s right by providing the provision for filing of opposition on the basis of prior common law rights acquired through the use of the mark in India and also through use internationally, leading to transborder/spillover goodwill and reputation in India.
Transborder reputation is interpreted from:
- Evidence of extensive use of the mark internationally;
- Survey evidence showing awareness of the mark in India;
- A significant market share in the primary field of activity globally;
- Evidence showing that a good number of customers from India purchased the opponent’s products/services on visits to other countries;
- Images/photographs of the opponent’s displays of the mark in any fairs, exhibitions, etc, especially those which were visited by Indian citizens or held in countries having a good number of the non-resident Indian population; and
- A good number of Indian followers of a client’s social media pages, customer reviews from India or people of Indian origin, etc.
All this helps in proving that a trademark’s reputation has spread to India and that registration/use of the applied mark will lead to passing off of the opponent’s prior adopted trademark.
Establishing passing off entails fulfilment of three conditions: (i) the opponent’s mark enjoys goodwill in India; (ii) use of the applied mark would amount to misrepresentation to public/consumers/members of the trade community, leading them to believe that there is some sort of business connection between the opponent and applicant; and (iii) irreparable injury/damage (monetary as well as reputation) to the opponent.
However, the condition is that the opponent’s transborder reputation in India must exist prior to the date of application or claimed use of the applicant’s mark.
“The Indian statutory regime pertaining to the opposition ensures that the rights of a prior adopter of a trademark are duly enforced.”
Manisha Singh and Omesh Puri (pictured), LexOrbis (India)
The ground of bad faith enhances the robustness of the opposition system. The Trade Marks Act says: “While considering an application for registration of a trademark and opposition filed in respect thereof, the registrar shall take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trademark.”
Facts such as the applicant’s pattern of filing applications for a mark that is similar to other well-reputed marks; evidence of the applicant being aware of the opponent’s business; that the applicant had a prior relationship with the trademark owner, including but not limited to, as a franchisee or distributor of the rightful owner’s goods/services, etc, can be included in the opposition while taking the ground of bad faith.
The Indian statutory regime pertaining to oppositions ensures that the rights of a prior adopter of a trademark are duly enforced. While the framework is quite sound, contested proceedings in India may take a considerable amount of time to conclude. Hence, it has been found prudent for the parties to explore resolving the conflict by way of settlement by deleting goods/service specification or entering into co-existence on mutual terms wherever possible.
Manisha Singh is founder and managing partner at LexOrbis. She can be contacted at: firstname.lastname@example.org
Omesh Puri is a partner at LexOrbis. He can be contacted at: email@example.com
Video courtesy of Adobe Stock / kokophotos
Tuesday, November 16, 2021