Trademark Opposition in India: Timeline and Evidence

A Jabalpur sweets business has been selling under its family name since the nineties. It never registered the mark. One Thursday its distributor sends a screenshot: a company in another state has advertised the same name in the Trade Marks Journal for Class 30. The sweets business has four months, and nothing more, to stop that registration cheaply.

That four month window is the whole of trademark opposition in India. Section 21 of the Trade Marks Act 1999 says that any person may, within four months of the date of advertisement or re-advertisement of an application in the Journal, give notice of opposition to the Registrar on Form TM-O with the prescribed fee. Not just registered proprietors. Any person. A prior user with no registration, a customer, a trade association, a competitor. But the four months run from publication, not from the day you found out, and unlike almost every other deadline in the Act, this one is not extendable. The Trade Marks Rules 2017 removed the extension that used to be available under the older rules.

Miss it and the mark proceeds to registration. You are then arguing about cancelling a registered mark rather than blocking an application, which is slower, dearer and starts from a worse position.

The stages, and the default that ends each one

Opposition is a paper proceeding run to a chain of deadlines. Each stage carries its own automatic penalty for silence, and those penalties are what actually decide most oppositions. Nobody argues them. They simply lapse.

Stage	Who files	Time allowed	If it is not done
Notice of opposition, Form TM-O	Opponent	4 months from advertisement	The mark proceeds to registration
Counter-statement	Applicant	2 months from receipt of the notice	The application is deemed abandoned
Evidence in support of opposition, Rule 45	Opponent	2 months from receipt of the counter-statement	The opposition is deemed abandoned
Evidence in support of application, Rule 46	Applicant	2 months from receipt of the above	The application is deemed abandoned
Evidence in reply, Rule 47	Opponent	1 month, strictly in reply	The right to reply is simply lost
Hearing, Rule 50	Both	Notice of at least one month	The Registrar can decide without you

Two points about that table matter more than the rest.

First, at the Rule 45 and Rule 46 stages a party is not obliged to file evidence. It may instead write to the Registrar, within the same period, stating that it relies on the facts already set out in its notice of opposition or counter-statement. What it cannot do is stay silent. Silence at Rule 45 loses the opposition. Silence at Rule 46 loses the application. A one page letter filed in time preserves the proceeding, and we have seen good cases lost for want of it.

Second, whether the evidence periods can be extended at all is genuinely unsettled. Section 131 allows the Registrar to extend time on request, but only where the Act does not itself fix the period, and the High Courts have not spoken with one voice on how that interacts with the 2017 Rules. The Registry treats these periods as strict. Plan on the basis that they are.

Grounds worth pleading

A notice of opposition should plead grounds, not grievances. The usual ones:

• Section 11(1). The advertised mark is identical or similar to an earlier mark for identical or similar goods, and there is a likelihood of confusion. This is the workhorse ground for anyone with an earlier registration or a pending earlier application.
• Section 11(3)(a). Use of the mark is liable to be prevented by the law of passing off. This is the ground for the unregistered prior user, and it is why the Jabalpur sweets business in the example has a real case despite never having filed.
• Section 11(2). The opponent’s mark is well known in India, so the applicant’s use across even dissimilar goods would take unfair advantage of or damage its distinctive character. High threshold, so plead it only where the evidence supports it.
• Section 9. The mark is descriptive, non-distinctive or otherwise barred. Useful where a competitor is trying to fence off an ordinary trade word.
• Section 18(1). The applicant is not the proprietor of the mark. This covers the distributor who filed his principal’s brand, the departing partner, and the former employee.
• A false claim of user. Where the application claims use from a date the applicant cannot support, the claim can be attacked and the application put to proof.
• Bad faith. Copying with knowledge, filing to extract money, filing on the back of a broken commercial relationship.
• Section 14. Where the mark falsely suggests a connection with a living person, or a person who died within the twenty years before the application, the Registrar may require consent.

Plead every ground you can support and no ground you cannot. A notice stuffed with unsupportable grounds tells the Registrar the opponent has nothing.

Evidence that carries weight

Evidence in an opposition goes in as an affidavit with exhibits, not as submissions. What decides the case is the dated document that predates the other side’s claimed use.

Worth filing:

• Invoices from the earliest period of use, including the first few, showing the mark on the face of the bill.
• Year wise turnover under the mark, certified by a chartered accountant rather than asserted in the affidavit.
• Advertising spend with actual copies: newspaper insertions with dates, hoarding photographs, printed catalogues, dated pages from the website and social accounts.
• Packaging, labels, cartons and bill books as actually used, which often show the mark in a form closer to the disputed one than the tidy logo file does.
• Registration certificates and the register extract for the earlier mark, plus its renewal record.
• Evidence of actual confusion, which is rare and powerful: wrongly addressed complaints, customer emails, misdirected payments, warranty claims sent to the wrong company.

Given very little weight: press articles about the company rather than the mark, undated photographs, self serving statements of reputation, screenshots with no date, and pages printed after the dispute began purporting to show use from years earlier.

Attach exhibits properly, mark and number them, and make sure the deponent has personal knowledge of what he is swearing to. A director who joined in 2022 cannot depose to how the business used the mark in 2009 without saying where the knowledge comes from.

The hearing, the decision and what comes after

Once the evidence rounds close, the Registrar fixes a hearing under Rule 50 on notice of not less than a month. A party that intends to appear must confirm within the short period the Rules allow and pay the prescribed fee. Adjournments are capped at two per party, each of not more than thirty days, and the request has to be made in advance. Hearings are held by video conference as a matter of routine, so an opponent in Jabalpur is not travelling to Mumbai for a twenty minute matter.

Section 21 lets the Registrar decide whether registration is to be permitted, and to permit it subject to conditions or limitations. He may also take a ground into account that was not in the notice, provided the parties get a chance to deal with it. Costs can be awarded, but the scale is modest, so opposition is a tool for protecting a brand rather than a way of recovering money.

An order of the Registrar is appealable to the High Court. After the Tribunals Reforms Act 2021 abolished the Intellectual Property Appellate Board, that jurisdiction went back to the High Courts, and Section 91 sets a three month period running from communication of the order, with power to condone delay for sufficient cause.

Realistically, a contested opposition that runs through both evidence rounds and a hearing adds one to three years to an application. That length is itself a bargaining fact. A very large share of oppositions end in a coexistence agreement, a withdrawal against a narrowed specification, or a limitation on the territory or trade channel. Those talks are cheapest before the evidence rounds start.

If the four months are already gone

Registration is not the end of the road, only the end of the cheap road.

• Section 57 rectification. Any person aggrieved may apply to have an entry in the register cancelled or varied, on grounds including that the entry was made without sufficient cause or wrongly remains on the register.
• Section 47 non-use removal. A mark can be taken off where it was registered without a bona fide intention to use it, or where there has been no bona fide use for a continuous period of five years from the date it was actually entered on the register, measured up to three months before the application.
• A civil suit. A prior user can sue for passing off regardless of the other side’s registration, and Section 34 protects continuous prior use against a later registered proprietor. The difference between the two causes of action is set out in our note on passing off and infringement.

The cheapest protection remains the boring one. Watch the Journal weekly for your classes, or have it watched. Four months is enough time to act, and no time at all to notice.

We act in opposition and rectification proceedings and in trademark suits before the district courts at Jabalpur and the Madhya Pradesh High Court, and the scope of that work is described on our trademark and intellectual property practice page. A related note explains how to answer an examination report, which is the stage most applications reach before publication.

This is general information on procedure under the Trade Marks Act 1999 and the Trade Marks Rules 2017, not legal advice on any specific mark. Whether an opposition is worth filing depends on your evidence of use, the classes involved and what you want the outcome to be. If a mark that concerns you has just been advertised, the contact page is the place to start, and please note the publication date, because the window has already begun to run.