OPPOSITION TO REGISTRATION :
Section 21 provides that “any person” may give a Notice of Opposition to the application for registration of a trade mark whether he has or has not any commercial or personal interest in the matter.The person need not be a prior registered trade mark owner. He can be a customer, a purchaser or member of the public likely to use the goods. The question of bona fides of the opponent does not arise.
Essential requirements for filing Notice of Opposition:
• In all cases (whether an ordinary trade mark, collective mark or certification mark), the Notice of Opposition should be on the prescribed form TM-5, accompanied by the prescribed fee of ` 2,500.
• It should be filed at the appropriate office – see rule 8
• The provisions of rule 18 regarding ‘address for service’ must be complied with, where necessary.
• The Notice of Opposition should contain particulars as prescribed in Rule 48, which runs as follows:
A Notice of Opposition shall contain,-
(a) in respect of an application against which opposition is entered-
(i) the application number against which opposition is entered;
(ii) an indication of the goods or services listed in the trade mark application against which opposition is entered; and
(iii) the name of the applicant for the trade mark.
(b) in respect of the earlier mark or the earlier right on which the opposition is based,-
(i) where the opposition is based on an earlier mark, a statement to that effect and an indication of the status of earlier mark;
(ii) where available, the application number or registration number and the filing date, including the priority date of the earlier mark;
(iii) where the opposition is based on an earlier mark which is alleged to be a well-known trade mark within the meaning of sub-section (2) of section 11, an indication to that effect that an indication of the country or countries in which the earlier mark is recognized to be well known.
(iv) Where the opposition is based on an earlier trade mark having a reputation within the meaning of paragraph (b) of sub-clause (2) of section 11 of the Act, an indication to that effect and an indication of whether the earlier mark is registered or applied for;
(v) A representation of the mark of the opponent and where appropriate, a description of the mark or earlier right, and
(vi) Where the goods or services in respect of which earlier mark has been registered or applied for an in respect of which the earlier mark is well-known within the meaning of sub-section (2) of section 11 or has a reputation within the meaning of that section, the opponent shall when indicating all the goods or services for which the earlier mark is protected, also indicate those goods or services on which the opposition is based.
(c) in respect of the opposing party-
(i) where the opposition is entered by the proprietor of the earlier mark or of the earlier right, his name and address and an indication that he is the proprietor of such mark or right;
(ii) where opposition is entered by a licensee not being a registered user, the name of the licensee and his address and an indication that he has been authorized to enter the opposition.
(iii) where the opposition is entered by the successor in title to the registered proprietor of a trade mark who has not yet been registered as new proprietor, an indication to that effect, the name and address of the opposing party and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office or, where this information is not available, was sent to the appropriate office; and
(iv) where the opposing party has no place of business in India, the name of the opponents and his address for service in India.