Step

Description of Activity

Notes

1

Preparing and filing Notice of Opposition

An opposition may be instituted against an application advertised in the Trade Marks Journal, within a period of four months from the date of availability of such advertisement. The four-month period cannot be extended under any circumstances. The notice of opposition is filed electronically within the deadline.

The Notice of Opposition can be signed by us and it is not mandatory for the document to be signed by the Client. We would only need the Power of Attorney at this stage.

2

The notice of opposition filed by the Opponent is verified by the Registry and if found in order is served on the Applicant.

Currently, the Trade Marks Office takes between 1 week to about 4 weeks to serve a copy of the Notice of Opposition on the Applicant. The service is usually made through email.

3

Filing of Counter Statement by the Applicant

The Applicant, if he desires to contest the matter, is required to file a Counter Statement within 2 months from the date of actual receipt of the Notice of Opposition from the Trade Marks Office. If the Counter Statement is not filed within the said deadline, the application would be deemed to have been ‘abandoned’.

The Counter Statement can be signed by us and it is not mandatory for the document to be signed by the Client.

4

The counter statement, once filed and verified by the Trade Marks Office is served on the Opponent.

The Trade Marks Office usually takes between 2 weeks to about 5 weeks to serve a copy of the Counter Statement on the Opponent. The service is usually made through email.

5

Filing and preparing Evidence in Support of the Opposition (EO) or filing letter relying on the statements made in the Notice of Opposition

Upon receipt of the Counter Statement from the Trade Marks Office, the Opponent has to file ‘evidence in support of the opposition’ by way of an affidavit of an authorised representative of the Opponent, within two months from the receipt of the counter statement. Such period cannot be extended under any circumstances.  The affidavit has to notarised and a scanned copy of the document is required to be shared with us prior to the deadline. The original affidavit can follow subsequently.

In the alternative, the Opponent may choose not to adduce evidence and may simply indicate that the Opponent intends to ‘rely’ on the statements made in the Notice of Opposition. Such letter can be filed by us on behalf of the Opponent. If neither the evidence nor the said letter of reliance is filed within the 2-month period, the Opposition will be dismissed as ‘abandoned’.

The ‘evidence in support of opposition’ or the letter relying on the Notice Of Opposition has to be served upon the Applicant or its agent on record.

6

Filing and preparing Evidence in Support of the Application (EA) or filing letter relying on the statements made in the Counter Statement

Upon receipt of the Evidence in Support of the Opposition from the Opponent or its Agent, the Applicant has to file ‘Evidence In Support Of Application’ by way of an affidavit of an authorised representative of the Applicant, within two months from the receipt of the evidence in support of the opposition. Such period cannot be extended under any circumstances.  The affidavit has to be notarised and a scanned copy of the document is required to be shared with us prior to the deadline. The original affidavit can follow subsequently.

In the alternative, the Applicant may choose not to adduce evidence and simply indicate that the Applicant intends to ‘rely’ on the statements made in the Counter Statement. Such letter can be filed by us on behalf of the Applicant. If neither the evidence nor the said letter of reliance is filed within the 2-month period, the Application will be dismissed as ‘abandoned’.

The ‘Evidence In Support Of Application’ or the letter relying on the Counter Statement has to be served upon the Opponent or its agent on record.

7

Drafting and filing of Evidence in Reply on behalf of the Opponent

The Opponent is further allowed to lead ‘Evidence In Reply’ within a period of one month upon receipt of the ‘Evidence in Support of Application’. Such period cannot be extended under any circumstances.

While this is not a mandatory provision, it is preferred that a formal rebuttal is made of the submissions made by the Applicant in its ‘Evidence In Support Of Application’.

8

Drafting, filing of Interlocutory Petition (IP) along with additional documents as ‘Further Evidence’

In certain cases, where any document is required to be brought on record after the completion of the aforesaid steps, an Interlocutory Petition may be filed seeking leave/permission of the Registrar of Trade Marks to allow taking on record of the further evidence by way of an affidavit. The affidavit has to signed by an authorised representative of the Client (whether Applicant or Opponent) and has to be notarised.

The Applicant or the Opponent as the case would be given an opportunity to rebut the case of the person filing the Interlocutory Petition/Affidavit. ‘Further Evidence’ is allowed subject to costs and sufficient grounds have to made out before the Ld. Registrar. ‘Further Evidence’ cannot be filed as a matter of right.

9

Filing Requests for Adjournments in case of hearings

The Trade Marks Office as per law does not permit more than two adjournments for a hearing. However, in exceptional circumstances, the Trade Marks Office may permit additional adjournment of hearings

10

Hearings

Main Hearings can take up to 5 years to be taken up for a hearing given the present backlog at the Trade Marks Office.

Procedural Hearings usually takes place in case of any compliance issues, i.e., if the parties have not complied with directions of the Registrar and/or there has been delay in the filing of the documents as indicated herein above. Such hearings take place within 6 months to about 1 year from such non-compliance and/or any other irregularity appearing in the records of the Trade Marks Office.

11

Reporting of Order/Opinion on the Next Course of Action

In case of unfavourable orders (including interim orders, e.g. refusal of the Trade Marks Office in accepting further evidence), an appeal may be preferred before the Intellectual Property Appellate Board (IPAB) within 3-months from the receipt of the order.