Trademark Counterstatement Filing
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What is Trademark Counterstatement?
A Trademark Counterstatement is a legal response to a trademark opposition. When another entity raises concerns about your trademark application, alleging possible conflicts with their existing trademarks, you have the right to defend your brand. The counterstatement is your formal response presenting arguments and evidence supporting the legitimacy of your trademark registration.
When a notice of opposition is received by the applicant, the counterstatement is required to be filed within 60 days of receipt of the communication from the department.
Worried ? Have Received A Trademark Opposition Notice !!!
At My Trademark Guide, we specialize in providing expert assistance for Trademark Counterstatement Filing Services in India. When your trademark application faces an opposition, filing a proper counterstatement is crucial to defending your rights. Under the Trade Marks Act, 1999, a counterstatement allows the applicant to respond to the grounds of opposition raised by another party and keep the application alive. Without filing it within the prescribed time, your trademark application risks being abandoned.
Trademark Opposition Flowchart
Publication in Journal
Once a trademark is accepted, it is published in the Trademark Journal, inviting objections within 4 months.
Filing Opposition (Form TM-O)
Any third party can file a Notice of Opposition with legal grounds against the trademark’s registration.
Counterstatement by Applicant
The applicant must reply within 2 months. If no reply is filed, the application is treated as abandoned.
Evidence Submission
Both parties exchange documents and evidence to support their claims, including proof of prior use, sales data, or distinctiveness.
Hearing Before Registrar
The Registrar schedules a hearing where both parties present oral arguments.
Final Decision
The Registrar decides whether to accept the opposition (rejecting the trademark) or dismiss it (allowing registration).
Trademark Counterstatement Filing Process
A Detailed Overview
After the Trademark is Accepted it is published in the weekly Journal available on the ipindia.gov.in. After the publication of the details of the Trademark in the journal, it is open to opposition from any third party. After publication, the Trademark is kept on hold for 4 months so that any party that would be aggrieved by the registration of the Trademark can give notice to registrar to stop the registration process.
Following steps shall be noted for filing a counterstatement:
Analysis of Opposition Letter
Once the opposition letter is received by the applicant, the first step is to carefully read the entire opposition letter. Having a full understanding of the ground of oppositions is necessary to reply to the opposition letter.
Drafting the Counterstatement
Write a strong reply to the opposition letter with all the reasons against the ground mentioned. This reply is crucial, as it’s the first impression, and a powerful one might make some opponent reconsider.
Sending the Notice
Send the counterstatement to the opponent. This isn’t done directly; instead, file Form TM-O with the Trademark Registrar along with the statement of counterstatement. The Registrar will then formally notify the opponent about the counterstatement filed.
Further Submissions
After the applicant’s counterstatement, the opponent needs to reply. It’s a back-and-forth process.
Applicant’s Reply
The applicant can provide evidence voluntarily to support their case during the opposition hearings.
Hearing
Once both parties have submitted their arguments, the Trademark department schedules a hearing. This gives both sides a chance to present their case to the Registrar, who will then make the final decision.
Documents Required For Filing Counterstatement
For Filing a Trademark Counterstatement on your behalf, we require the following from you:
Authorization Letter
Our team will share the format of the authorization letter. This authorization letter is necessary so we can file the counterstatement on your behalf.
Proofs of Use
If you are already using the mark, we will require proofs of use of the mark like invoices, advertisement expenses, turnover proofs, etc.
Statement on Impact
A statement explaining how the opposition will impact your rights. This is necessary as it would help us to draft the opposition letter on your behalf.
My Trademark Guide is your reliable partner in the trademark counterstatement filing process. We provide expert guidance and support to make the journey hassle-free. You can trust us to help you compile all the required documents and navigate through the complexities of the opposition process. Safeguard your rights today by choosing us!
Qualities Of Good Counterstatement
Think of a strong counterstatement as your protective shield when facing opposition. Here’s what to keep in mind when creating one:
- Facts First: If the notice of opposition mentions any facts, admit them if they’re true. If anything false is mentioned in the opposition letter then deny it.
- Back it up with Evidence: Support your counterstatement with real evidence Show how unique your trademark is, talk about its history in the market and give examples of similar trademarks coexisting peacefully.
- Address Each Issue: Go through each point raised in the opposition letter and respond to them one by one. Give a clear response to each paragraph mentioned in the opposition letter.
- Signature Matters: A counterstatement should be signed by the applicant or its attorney.
This way, your counterstatement becomes a strong defense, backed by facts and well-structured arguments.
Drafting and filing a trademark counterstatement without technical knowledge can be challenging and may reduce the chances of presenting a strong case. My Trademark Guide makes the trademark counterstatement filing easier. Contact us today to simplify the process and file counterstatement.
Importance of Filing a Counterstatement
Filing a counterstatement is not just a procedural requirement but a decisive step in the opposition process. If the applicant fails to file a counterstatement within two months from the date of receiving the opposition notice, the trademark application is deemed abandoned. This means you lose your right to register the mark, regardless of the merits of your case. Therefore, a well-drafted counterstatement is essential to:
Protect your trademark application from abandonment.
Contest false or misleading claims made by the opponent.
Demonstrate the distinctiveness and originality of your mark.
Provide legal grounds why your mark should be registered.
Legal Provisions under Indian Trademark Law
The filing of a counterstatement is governed by Section 21 of the Trade Marks Act, 1999 and the corresponding Trademark Rules. According to law:
The counterstatement must be filed in the prescribed form (Form TM-O).
It must be filed within 2 months of receiving the opposition notice.
No extension of time is allowed beyond this period.
Failure to comply with these timelines results in automatic abandonment of the application.
Trademark Opposition vs. Counterstatement
It’s important to distinguish between opposition and counterstatement. An opposition is filed by a third party to prevent registration of your trademark, while a counterstatement is your official reply to keep the application alive and contest the opposition. Both are essential parts of the Trademark Opposition Proceedings.
Role Of Trademarks Office
The Trademarks Office plays a crucial role in the entire opposition process. Once they get the notice of opposition and counter-statements, the Registrar looks at the evidence and arguments from both sides. If needed, they might schedule a hearing for the parties to explain their case in person.
Here are possible outcomes of a trademark opposition:
- Withdrawal: The parties might settle, and as a result, the opposition is withdrawn.
- Decision in Favor of the Applicant: If the Registrar doesn’t find valid reasons for opposition, the trademark application continues toward registration.
- Decision in Favor of the Opponent: If the opposition is successful, the trademark application might be rejected or limited in some way.
Why Choose Us
In the world of intellectual property, trademarks are like the foundation of your brand identity. But, when you’re trying to secure and protect your brand, you might run into challenges, and one of them is dealing with trademark opposition. To safeguard your brand from potential threats, you’ll need to submit something called a “Trademark Opposition Counterstatement.”
At My Trademark Guide, we understand the significance of safeguarding your interest in today’s competitive business landscape. As a leading provider of Trademark services, we take pride in offering comprehensive and seamless solutions to protect your rights. Here’s why choosing us is the smart and strategic decision for your Trademark service needs in India:
Expertise and Experience
Comprehensive Guidance
Cost-Effective Solutions
Timely Execution
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Frequently Asked Questions (FAQs)
A trademark counterstatement is the official reply filed by the applicant when an opposition is raised against their trademark. It allows the applicant to defend their mark and contest the claims made by the opponent.
Under the Trade Marks Act, 1999, a counterstatement must be filed within 2 months from the date of receiving the Notice of Opposition. No extension is permitted beyond this deadline.
If you fail to file a counterstatement within the prescribed period, your trademark application is automatically marked as abandoned, and the opposition succeeds without further proceedings.
A trademark counterstatement is filed using Form TM-O through the official IP India online portal, along with the prescribed government fees.
At the counterstatement stage, you mainly reply to the opponent’s claims. However, you may attach supporting documents to strengthen your defense. Detailed evidence is usually filed in the next stage of the opposition proceedings.
Yes, you can file it yourself, but it is strongly recommended to hire a trademark attorney. A professional ensures that all legal grounds are covered, deadlines are met, and your application is properly defended.
You typically need the Notice of Opposition, proof of trademark use (like invoices, advertisements, or promotional material), and a Power of Attorney authorizing your attorney to act on your behalf.
After you file a counterstatement, the Registrar sends a copy to the opponent. The opponent then has to submit evidence in support of opposition, and the case proceeds with exchange of documents, hearings, and a final decision by the Registrar.