EVIDENCE IN REPLY BY OPPONENT: RULE 47 OF THE TRADE MARK RULES, 2017

The opposition stage is a critical part of the trademark registration process, allowing third parties to challenge the registration of a mark that may conflict with their existing rights. Once an opposition is filed, a structured legal procedure begins, governed by specific timelines and provisions under Rule 47 of the Trade Marks Rules, 2017.

Among the key aspects of this procedure is the submission of evidence by both the opponent and the applicant. Each stage of evidence filing plays a vital role in establishing the strength of a party’s claim. Understanding the steps, timelines, and relevant rules, particularly Rules 44 to 48, is essential.

This article outlines the complete process of evidence submission during trademark opposition, highlighting the importance of Rule 47 (Evidence in Reply by Opponent) and Rule 48 (Further Evidence), along with the prescribed time limits and practical guidance for timely submission.

TRADEMARK EVIDENCE SUBMISSION PROCESS

During the trademark registration process, if an opposition is filed against the applied mark, a new procedure begins. The steps involved in this opposition process are as follows:

1. Filing of Opposition: The opposition must be filed within four months from the date the trademark is published in the Trade Marks Journal.
2. Filing of Counterstatement: After the opposition has been filed, the applicant must respond by filing a counterstatement within two months from the date of receipt of the notice of opposition.
3. Evidence in Support of Opposition: Following the filing of the counterstatement, the opponent must submit evidence in support of the opposition within two months from the date of receipt of the counterstatement.
4. Evidence in Support of Application: In response, the applicant must file evidence in support of the application within two months from the date of receipt of the opponent’s evidence.
5. Evidence in Reply by Opponent: Finally, the opponent may file evidence in reply within one month from the date of receipt of the applicant’s evidence in support of the application.

RULE 47 OF TRADEMARKS RULES, 2017

Rule 47 of Trademarks Rules, 2017, states:

“Evidence in reply by opponent. — Within one month from the receipt by the opponent of the copies of the applicant’s affidavit, the opponent may leave with the Registrar evidence by affidavit in reply and shall deliver to the applicant copies of the same, including exhibits, if any, and shall intimate the Registrar in writing of such delivery.”

In most cases, the opponent simply files a letter under Rule 47 stating that they rely on the facts and evidence already submitted in opposition and evidence in support of the opposition and do not wish to submit any further evidence at this stage. However, if the opponent has any additional strong arguments or new evidence that could further strengthen their case, they may choose to file evidence in reply by the opponent along with the evidence adduced with it at this stage.

ANOTHER CHANCE OF FILING EVIDENCE

Rule 48 of Trademarks Rules states:

“Further evidence— No further evidence shall be left on either side, but in any proceedings before the Registrar, he may at any time, if he thinks fit, give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit.”

According to the Trade Marks Rules, 2017, the provisions under Rules 44 to 47 provide sufficient opportunities for both parties to file their respective replies and evidence. However, Rule 48 of the Trade Marks Rules grants an additional opportunity to submit evidence, but this is entirely at the discretion of the Registrar. Such an opportunity will be allowed only if the Registrar considers it appropriate to do so.

PRESCRIBED TIME PERIOD

• One month from receipt of evidence in support of the application or notice of non-filing.

TMWala can assist in tracking deadlines, preparing affidavits, and ensuring timely submission.

CONTENTS OF EVIDENCE IN SUPPORT OF APPLICATION

Evidence submitted should:

• Respond to all objections or contentions raised by the applicant in the Evidence in Support of Application.
• Include documents and records that further strengthen the opponent’s case.
• Documents need to be attached as annexures to a verified affidavit.

CONCLUSION

The evidence submission stage plays a decisive role in the outcome of a trademark opposition. Each step from the initial opposition to the evidence in reply is governed by strict timelines under the Trade Marks Rules, 2017, ensuring procedural fairness and efficiency. Rule 47 provides the opponent a final opportunity to strengthen their case through additional evidence or arguments. At the same time, Rule 48 allows a limited discretionary chance for further submissions, only if the Registrar deems it appropriate.

Timely and well-prepared evidence can significantly influence the Registrar’s decision. Therefore, parties must carefully adhere to the prescribed deadlines and procedural requirements. Professional assistance, such as from TMWala, can be valuable in managing documentation, affidavits, and submissions to ensure a strong and compliant opposition process.

FAQs

1. What is Rule 47?
   It allows the opponent to file evidence in reply within one month of receiving the applicant’s evidence.
2. Is filing evidence in reply by the opponent mandatory?
   No, the opponent may choose to rely on previously submitted evidence.
3. Can more evidence be filed later?
   Only if the Registrar permits it under Rule 48.
4. What is the time limit for filing evidence in reply?
   Within one month of receipt of the applicant’s evidence.