EVIDENCE IN SUPPORT OF OPPOSITION: RULE 45 OF THE TRADE MARK RULES, 2017

When a trademark application is under registration and an opposition is filed, a separate legal procedure begins. As per Section 21 of the Trade Marks Act, 1999, read with Rule 45 of the Trade Marks Rules, 2017, the applicant must file a counterstatement in response to the opposition filed.

In the counterstatement, the applicant addresses and replies in detail to all the objections and contentions raised by the opponent. This reply must be filed, and a copy of the counter must be served to the opponent within the prescribed time limit.

However, filing a counterstatement does not conclude the matter. There are further steps involved in the opposition proceedings. Once the applicant files the counterstatement, the opponent must submit a reply to the counterstatement, as per Rule 45 of the Trade Marks Rules, 2017. This stage is referred to as the “Evidence in Support of Opposition.”

In this article, we will briefly discuss “Evidence in Support of Opposition” as provided under Rule 45 of the Trade Marks Rules, 2017. This includes an overview of the time limits for filing and serving the evidence, the contents that must be included, and the documents required to be submitted with the evidence in support of the opposition.

RULE 45 OF THE TRADE MARKS RULES, 2017

This rule provides that the opponent has two options. The opponent may either submit (adduce) evidence in support of the opposition or inform in writing that they do not wish to file any evidence and instead choose to rely solely on the statements and facts already mentioned in the notice of opposition. The rule states:

• “Evidence in support of opposition.— (1) Within two months from service of a copy of the counterstatement, the opponent shall either leave with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence, including exhibits, if any, that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery.
• If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.”

PRESCRIBED TIME PERIOD

Under Rule 45 of the Trade Marks Rules, 2017, the opponent is required to file evidence in support of opposition within two months from the date of receiving the counterstatement and serve the same to the applicant.

If the opponent fails to submit the evidence or to communicate in writing that they do not wish to file any evidence within the prescribed time period, the opposition shall be deemed to have been abandoned.

To avoid such lapses, TMWala’s trademark experts can help you monitor timelines, prepare the necessary affidavits, and ensure your documents are filed and served properly before the deadline.

CONTENTS OF EVIDENCE IN SUPPORT OF OPPOSITION

• The Evidence in Support of Opposition should contain a detailed response to each argument and contention raised by the applicant in the counterstatement.
• This evidence should comprise all documents, materials, or records that the opponent relies upon to strengthen their case, including anything that supports the distinctiveness or prior use of their mark, or that may weaken the applicant’s position.
• All such supporting documents and materials submitted by the opponent are attached as annexures to the affidavit filed as evidence in support of the opposition.

DOCUMENTS TO BE SUBMITTED WITH EVIDENCE IN SUPPORT OF OPPOSITION

The following types of documents are generally submitted along with the Evidence in Support of Opposition:

• Documents related to the firm or company, such as MSME registration, GST certificate, or any other document establishing the legal status and identity of the opponent.
• Documents related to the opponent’s trademark and copyright, including registration certificates, trademark applications, renewal certificates, or any other record proving ownership or prior use of the mark.
• Any other supporting documents that strengthen the opposition, such as advertisements, invoices, promotional materials, sales figures, or correspondence showing the mark’s use and reputation in the market.

THINGS TO KEEP IN MIND

While drafting and compiling the Evidence in Support of Opposition, the following points should be carefully observed:

• Ensure proper verification the affidavit must include para-wise verification, along with the date and place of verification, and must be duly signed by the opponent or an authorized representative.
• Respond to every argument made in the counterstatement, ensuring that no contention raised by the applicant remains unaddressed.
• Keep the content clear, direct, and concise. Avoid including unnecessary or irrelevant details.
• Provide adequate supporting evidence, submit as many relevant documents as possible to substantiate your claims, and strengthen your arguments.
• Maintain clarity and organization; all attached exhibits should be legible, properly numbered, organized, and directly relevant to the case.

CONCLUSION

The stage of Evidence in Support of Opposition plays a crucial role in the trademark opposition proceedings. It provides the opponent an opportunity to substantiate their claims with documentary proof and to counter the applicant’s contentions effectively. Properly prepared evidence, supported by relevant documents and a well-structured affidavit, can significantly strengthen the opponent’s position before the Registrar.

It is important to adhere strictly to the procedural requirements and timelines under Rule 45 of the Trade Marks Rules, 2017, as failure to do so may lead to the opposition being deemed abandoned. Therefore, careful drafting, proper verification, and submission of comprehensive and well-organized evidence are essential to ensure that the opposition is effectively presented and considered by the Registry.

If you need professional assistance in drafting affidavits, preparing evidence, or managing opposition timelines, TMWala can guide you through the entire process, ensuring accuracy, compliance, and a strong legal presentation of your opposition.

FAQs

1. What is the Evidence in support of opposition?
   It is the Opponent’s reply to the counterstatement, with affidavits and supporting documents.
2. What is the Time limit for opposition?
   2 months from the date of service of the counterstatement.
3. What documents are needed for opposition?
   Company/firm records, trademark certificates, promotional materials, invoices, sales records, etc.
4. What if evidence in support of the opposition is not filed on time?
   Opposition shall be deemed to have abandoned.
5. How can TMWala help?
   TMWala assists in drafting, organizing, and filing evidence to strengthen your opposition.