Patent & Trademark Opposition Proceedings in India
PATENT OPPOSITION IN INDIA
1. Pre-grant Opposition: Any person can file an opposition for grant of patent after the application has been published.
2. Post-grant Opposition: Any person can file an opposition within a period twelve months after the grant of a patent.
3. Grounds of Opposition: Opposition (Pre-grant & Post-grant) may be filed on any of the following grounds:
- a. Non compliance of patentability requirements.
- b. Nondisclosure disclosure of genetic resources or traditional knowledge.
- c. Wrongful obtainment of the invention by the inventor
- d. Publication of the claimed invention before the priority date.
- e. Sale or Import of the invention before the priority date.
- f. Public use or display of the invention.
- g. The invention doesn’t satisfy the patentability require doesn’t satisfy the requirements.
- h. Disclosure of false information to patent office.
- i. Application for the invention is not filed within twelve months from the date of convention application.
- j. Nondisclosure disclosure of the biological source.
- k. Invention is anticipated by traditional knowledge.
4. Process of Opposition: On receiving a notice of opposition, the controller notifies the patentee. He then constitutes an Opposition board to deal with the opposition. The Opposition board decides the issues later than giving reasonable opportunity of hearing to both the parties. The Opposition board might invalidate the patent, need amendments or maintain the status quo. If amendments are required, they have to be made within the prescribed period in order to maintain the patent.
5. GRANT: If the application satisfies all the needs of the patent act, the application is said to be in order for grant. A patent application in order for grant shall be granted expeditiously. A granted patent shall be published in the official gazette and shall be open for public inspection. Every granted patent shall be given the filing date. The patent will be valid throughout India. A granted patent gives the patent holder the exclusive right to make, use, sell, offer for sale and import the product or use the process.
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TRADEMARK OPPOSITION IN INDIA
Trademark is one of the most important economic rights and hence once the trademark application is approved by the Registrar of Trademarks, which may be subject to conditions or not, the subject mark is advertised in the Indian Trade Marks Journal. By virtue of Section 21 of the Trade Marks Act, 1999 any person may initiate opposition proceedings against the subject mark, however the same should be initiated within the prescribed period of three months which is extendable by a period of one month on application from the date of the said advertisement in the Trade Marks Journal.
Trademark Opposition Proceedings in India
The Opposition proceedings are to be initiated before the concerned Registrar of Trade Marks. The jurisdiction for the proceeding is exclusively determined on the basis of the place of filing of the application for the trademark. Any person is entitled to initiate opposition proceedings in India under the Trade Marks Act by filing Form 5 provided such person proves his interest in the subject mark to the satisfaction of the Registrar of Trade Marks. Upon receipt of the Notice of Opposition, the Registrar is required under the Act to serve a copy of the same to the Applicant and the Applicant within two months from the date or receipt of such Notice of Opposition is required to file the Counter Statement by way of Form 6. If the Counter Statement is not filed within the said stipulated period, he shall be deemed to have abandoned the subject application. If the Applicant files the Counter Statement, the Registrar is required to serve the copy of the Counter Statement on the opponent and he in turn has two months time extendable further for one month upon application to file the Evidence in Support of Opposition by way of Affidavit or write to the Registrar that he does not desire to file evidence but intends to rely on the facts stated in the Notice of Opposition. The Applicant too is provided with two months time for filing Evidence in Support of Application, if any. Additionally the Opponent is given one month time to file Evidence in Reply upon receipt of the Evidence in Support of Application. Upon completion of the formalities of evidences, the Registrar gives notice to the parties of the first date of hearing and within fourteen days of the receipt of the notice of hearing, The parties are required to notify the Registrar of their intention to appear in the matter and finally the matter is heard by the Registrar and is decided upon merits.
Grounds of Opposition:
The various grounds on which any person may initiate Opposition Proceedings are as follows:
The trademark applied for is:
1. Devoid of distinctive character
2. Descriptive in nature
3. Customary in the current language and or in the established practices of trade
4. Likely to deceive public or cause confusion
5. Contains matters that are likely to hurt religious feelings of any class or section of the citizens of India
6. Prohibited under the Emblem and names (Prevention of Improper Use) Act, 1950
7. Exclusively of the shape of the goods
8. Identical with/similar to an earlier trademark
9. In Malafide/bad faith
10. Prevented by virtue of the law of passing off
11. Contrary to any law for the time being in force
12. Prevented by way of Copyright Act, 1957
The grounds and forum for rectification/cancellation proceedings in India are also very same as that of the Opposition.
Apart from the above proceedings, invalidity proceedings can be initiated which is usually clubbed in infringement proceedings and the grounds for the invalidity proceedings are the same as that of the Opposition proceedings cited above. However the forum for invalidity proceedings is Intellectual Property Appellate Board (IPAB) and as per section 57 of the Trade Marks Act, 1999 the IPAB is empowered to invalidate the registration of a trademark partially.
The Opposition proceedings are the undisputable and effective remedy available to registered proprietor of the trademark and all that the registered proprietor is required to do is to be vigilant and initiate appropriate proceeding at the right time.
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