Section 21 of Trademark Act 1999 governs opposition to trademark registration in India. It allows any person to challenge a trademark application after publication in the Trade Marks Journal. Section 21 of Trademark involves the public in the registration process in order to protect existing rights and prevent consumer confusion. It outlines a process where individuals file oppositions, applicants respond with counter-statements and both parties submit evidence. The Registrar conducts hearings and decides on registration. This article examines Section 21, its procedures, timelines, and role in maintaining the integrity of trademark law in India.
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What is Section 21 of Trademark Act?
Section 21 of Trademark Act, 1999 is called "Opposition to Registration." It falls under Chapter III which covers how trademarks get registered. Section 21 lets people challenge a trademark application after it is accepted and published in the Trade Marks Journal. The goal of Section 21 of Trademark Act is to involve the public in the process. It ensures that trademarks don’t harm existing rights or mislead consumers.
Unlike some countries where only affected parties can object, Section 21 allows any person to file an opposition. This approach shows the public interest side of trademark law. The Registrar of Trademarks acts as a gatekeeper to keep the trademark register fair and accurate. The opposition process under Section 21 is a formal dispute. It involves notices, counter-statements, evidence, hearings, and a final decision by the Registrar.
Section 21 has seven subsections. Each one explains a specific part of the opposition process. The Trade Marks Rules, 2017, support it with forms, fees, and detailed steps. For example, oppositions use Form TM-O, with fees of ₹2,700 to ₹3,000 based on the filing method. Lawyers and legal experts need to understand Section 21. It shows how the law balances the rights of applicants and those who oppose them.
Subsection (1): Filing the Notice of Opposition
Section 21(1) says that any person can file a notice of opposition within four months of the trademark application’s advertisement or re-advertisement in the Trade Marks Journal. The notice must be written, use Form TM-O & include the required fee. This rule makes the process open to everyone like competitors or consumers without needing to show direct harm.
For example, if a trademark is similar to an existing one and is advertised on January 1, 2025 then the opposition deadline will be May 1, 2025. This timeline pushes trademark owners to regularly check the Journal.
Subsection (2): Service and Counter-Statement
Section 21(2) requires the Registrar to send a copy of the opposition notice to the applicant. The applicant must file a counter-statement within two months of receiving it. The counter-statement explains why the trademark application is valid. If the applicant doesn’t respond, the application is considered abandoned. The Rules allow a one-month extension if requested.
This rule ensures quick responses to keep the trademark registration process moving. Lawyers often advise clients to prepare counter-statements carefully, including proof of prior use or distinctiveness.
Subsection (3): Service of Counter-Statement
If the applicant files a counter-statement, Section 21(3) says the Registrar must send a copy to the opposer. This step keeps the process fair. It lets the opposer see the applicant’s arguments before moving to evidence submission.
Subsection (4): Evidence and Hearing
Section 21(4) covers submitting evidence. Both sides must provide evidence within set times, usually two months each, with possible extensions. The Registrar must offer a hearing if either party asks for one.
Evidence can include affidavits, sales invoices or advertising materials. This stage is critical for building a strong case.
Subsection (5): Registrar’s Decision
Under Section 21(5), the Registrar of Trademarks reviews the evidence and hears both sides. Then, they decide whether to allow the trademark registration, possibly with conditions or limits. The Registrar can also consider reasons not raised by the opposer, which supports the public interest.
Subsection (6): Security for Costs
Section 21(6) lets the Registrar ask non-resident parties for security for costs. If they don’t pay, their opposition or application may be abandoned. This rule protects against frivolous actions from overseas.
Subsection (7): Corrections and Amendments
Section 21(7) allows the Registrar to permit corrections or amendments to the notice or counter-statement if fair. This gives flexibility for honest mistakes.
Procedure for Trademark Opposition
The opposition process under Section 21 of Trademark Act follows clear steps, guided by Rules 42 to 50 of the Trade Marks Rules, 2017:
Advertisement and Monitoring: After acceptance, the trademark application is published in the Trade Marks Journal, starting the four-month opposition window.
Filing Opposition: File Form TM-O with reasons, like similarity under Section 11 or lack of distinctiveness under Section 9.
Counter-Statement: The applicant responds with Form TM-O within two months.
Evidence Exchange: The opposer submits evidence first (Rule 45), then the applicant (Rule 46), followed by reply evidence (Rule 47).
Hearing and Decision: The Registrar holds a hearing (Rule 50) and makes a decision.
This clear process ensures fairness and efficiency.
Know How to Name a Trademark in India.
Timelines and Requirements
The following table showing key timelines under Section 21 of Trademark Act, comparing standard periods with possible extensions:
Stage | Standard Timeline | Possible Extension | Consequence of Non-Compliance |
Filing Opposition (Subsection 1) | 4 months from advertisement | None (strict) | Loss of right to oppose |
Filing Counter-Statement (Subsection 2) | 2 months from receipt of notice | 1 month (on request via Form TM-M) | Application abandoned |
Evidence by Opposer (Subsection 4) | 2 months from counter-statement service | 1 month | Opposition may be dismissed |
Evidence by Applicant (Subsection 4) | 2 months from opposer’s evidence | 1 month | Weakened defense |
Reply Evidence by Opposer | 1 month from applicant’s evidence | None | No further evidence allowed (Rule 48) |
Grounds for Opposition
Section 21 of Trademark Act sets the procedure but the reasons for opposition are derived from provisions like Section 9 (absolute grounds) or Section 11 (relative grounds). Common reasons include marks that look too similar, lack distinctiveness or are filed in bad faith. The "any person" rule also allows oppositions based on public policy, like marks that offend religious sentiments.
Evidence Stages and Hearing
Evidence is submitted through affidavits, with documents showing use or reputation. Hearings are like mini-trials, allowing oral arguments. The Registrar’s decision can be appealed to the High Courts (after 2021 changes replaced the Intellectual Property Appellate Board).
Key Case Laws Illustrating Section 21
Several court cases explain how Section 21 of Trademark Act works. In Prem N. Mayor v. Registrar of Trade Marks (1968), the Calcutta High Court said "any person" can oppose without a direct interest, focusing on the case’s merits.
In Ramya S. Moorthy v. Registrar of Trade Marks (2023), the Madras High Court ruled that the two-month counter-statement period starts when the applicant actually receives the notice.
In Parvesh Kamboj v. Controller General (2022), the Delhi High Court allowed late oppositions due to COVID-19 disruptions.
Summary
Section 21 of Trademark Act 1999 makes sure of a transparent process for trademark registration in India. It enables anyone to oppose applications, safeguarding the trademark register and public interest. The section establishes a clear framework where parties file notices, submit counter-statements, provide evidence and attend hearings. The Registrar evaluates cases and decides on registration. Lawyers navigate this process to protect client rights.
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Section 21 of Trademark Act: FAQs
Q1. What is Section 112A of the Trademark Act?
Section 112A protects well-known trademarks in India from use in similar goods or services that may confuse the public.
Q2. What is Section 20 of the Trademark Act?
Section 20 requires the Registrar to advertise accepted trademark applications in the Trade Marks Journal.
Q3. What are the 4 types of trademarks?
The four types are product marks for goods, service marks for services, collective marks for association members, and certification marks for quality standards.
Q4. What is notice of opposition under Trademark Act?
A notice of opposition lets any person challenge a published trademark application within four months.
Q5. Is section 112A mandatory?
No, Section 112A provides optional protection for well-known trademarks if owners register them as such.
