RULE 43 OF THE TRADE MARK RULES, 2017: REQUIREMENTS OF NOTICE OF OPPOSITION

In today’s competitive world, a trademark is more than just a symbol; it represents a company’s identity. The application for registration ofa new trademark which is identical or confusingly similar to an already existing trademarkjeopardises brand recognition, customer trust, and market share. To protect the already existing trade mark, the notice of opposition plays acrucial role.

Section 21 of the Trade Marks Act, 1999 provides provisions related to opposition proceedings, allowing any person to challenge the registration of a trademark before it is officially granted.

To read section 21: https://tmwala.com/blog-section-21-of-the-trade-marks-act-1999/

Here is an article that deals with the requirements of the valid Notice of Opposition against a trademark application, which is provided under Rule 43 of the Trade Marks Rules, 2017.

Requirements of the notice of opposition:

Rule 43(1) of the Trade Marks Rules provides the basic requirements or contents of a valid notice of opposition.

Rule 43(1)(a) of the Trade Marks Rules

According to Rule 43(1)(a) of the Trade Marks Rules, a notice of opposition must contain:

1. Trademark Application No.:The Application No. of trademark against which the notice of opposition is to be filed.
2. Goods and services:Description of Goods or services in relation to which the Trade Mark Application against which the notice of opposition is to be filed.
3. Applicant’s name:The name of the applicant of the Trade Mark against which the notice of opposition has to be filed.

Rule 43(1)(b) of the Trade Marks Rules:

As per Rule 43(1)(b) of the Trade Marks Rules, if the notice of opposition is based on any earlier trademark or earlier right, the person filing the notice of opposition must provide information regarding the same. The person filing the notice of opposition is bound to provide following information with respect its earlier trademark(s) –

• Status of the trade mark: The person filing the notice of opposition must provide information regarding the status of its existing trade mark application or registrations, if any.

• Details of the trade mark: The person filing the notice of opposition must provide details of its trade marks such as Application no. of the trade mark, date of filing of the trade mark application, date of use of the trade mark.

• Well-known trade mark: If the opposition is based on an earlier trademark and the said earlier trademark is a well-known trade mark within the meaning of section 11(2) of the Trade Marks Act, the person filing the notice of opposition must provide information regarding the said well-known mark.

• Reputed trade mark: If the opposition is based on an earlier trademark and the said earlier trademark is a reputed trade mark within the meaning of Section 11(2)(b), the person filing the notice of opposition must provide information regarding the same and also indicate whether the reputed mark is registered or pending.

• Description of trade mark: The person filing the notice of opposition must provide representation of its earlier trademark. Additionally, where appropriate, a brief description of the earlier mark or other earlier rights should also be provided.

• Goods and services: The person filing the notice of opposition must provide information with respect to all the goods and services for which the earlier trademarks are protected.

Rule 43(1)(c) of the Trade Marks Rules:

According to Rule 43(1)(c) of the Trade Marks Rules the notice of opposition must contain information regarding the opposing party.

• If Proprietor: If the notice of opposition is being filed by the proprietor of the earlier trade mark, the opposition must contain the name and address of such proprietor of the earlier trademark or earlier right, along with a statement confirming that the opponent is the legal proprietor.

• If licensee: If the notice of opposition is being filed by the licensee of the earlier trade mark, the opposition must contain name and address of such licensee, along with the statement that the licensee is authorised to file the opposition.

• If successor in title: If the notice of opposition is being filed by the successor in title who is yet to be recorded as the new proprietor on the official records of the registry, the opposition must contain name and address of such successor in title, along with the date on which the new proprietor’s application for registration was received by the appropriate office orsent to the appropriate office.

• If no place of business in India: If the individual or entity has no principal place of business in India, the opposition must contain the name and address of the opponent for service within India.

Rule 43(1)(d) of the Trade Marks Rules:

Rule 43(1)(d) of the Trade Marks Rules mandates that the notice of opposition must contain grounds on which the person is seeking to file the notice of opposition.

Note: Notice of opposition can be filed either on absolute grounds of refusal or relative ground of refusal or both.

To Read about absolute grounds of refusal of registration: https://tmwala.com/blog-section-9-of-the-trade-marks-act-1999/

To Read about relative grounds of refusal of registration: https://tmwala.com/blog-section-11-of-the-trade-marks-act-1999-relative-grounds-of-refusal-of-registration/

Verification of the notice of opposition:

Rules 43(2), 43(3) and 43(4) of the Trade Marks Rules provides provisions related to the verification of the notice of opposition.

Rule 43(2) of the Trade Marks Rules:

Rule 43(2) of the Trade Marks Rules mandates that there must be verification at the foot/end of the notice of opposition. Accordingly, the notice of opposition must be verified or signed by the opponent or by his duly authorised agent.

Rule 43(3) of the Trade Marks Rules:

Rule 43(3) of the Trade Marks Rules mandates that the person verifying the notice of opposition must clearly specify which paragraphs of the opposition are verified based on its personal knowledge, and which paragraphs are verified on the basis of information received and are believed to be true. The verification must always be with reference to the numbered paragraphs.

Rule 43(4) of the Trade Marks Rules:

According to Rule 43(4) of the Trade Marks Rules, the verification at the end of the notice of opposition must be signed by the person making it. The person signing or verifying the notice of opposition must also clearly mention the date and place of verification of the said notice of opposition.

Conclusion:

From the aforementioned explanation, a clear understanding of the applicability of Rule 43 of the Trade Marks Rules, 2017 can be drawn. Rule 43 acts as a strong provision providing the contents and the requirements for a valid notice of opposition. These rules need to be mandatory complied with, failing which, the notice of opposition could be rendered infructuous.

Procedural rules, however tedious, ensure the authenticity, legitimacy and accuracy of any petition, notice, affidavit. Hence, the same must be given equal, if not more, importance as the substantive part of such petition, notice, affidavit etc.