You’ve filed your trademark. The examination report came and you dealt with it. The mark was accepted and published in the Trade Marks Journal. And then, a few weeks later, you receive notice that someone has filed an opposition.
This is not a rare occurrence. In contested sectors — technology, fashion, food, pharmaceuticals — trademark oppositions are common. Understanding how the process works is essential to protecting your position.
What Is a Trademark Opposition?
An opposition is a formal challenge to the registration of a trademark, filed during the publication window in the Trade Marks Journal.
Once a trademark application is accepted by the Registry, it is published in the journal. From the date of publication, there is a four-month window during which any person can file an opposition.
The opposition mechanism exists to allow existing rights-holders — and genuinely aggrieved parties — to challenge a proposed registration before it becomes final.
Who Can File an Opposition?
Any person. Not just registered trademark owners. Not just those operating in the same class. A competitor, an industry association, a consumer, an individual with prior use rights — any of them can oppose.
The broad standing for opposition reflects the public interest dimension of trademark law: the register should contain marks that are validly registered, and anyone who disagrees should have the chance to say so.
In practice, most oppositions are filed by: Competitors with registered or pending marks in the same class Entities with well-known marks who want to prevent similar marks Businesses with prior unregistered use who fear confusion or misappropriation
Grounds for Opposition
Oppositions can be filed on any ground that would have justified refusing the application. This includes:
Relative grounds: The mark is identical or deceptively similar to an earlier registered or pending mark in the same class.
Absolute grounds: The mark lacks distinctiveness, is descriptive, deceptive, or otherwise fails the Section 9 criteria.
Prior use: The opponent has been using the same or a similar mark in the trade for a period prior to the applicant’s date of use, giving them priority under the passing off doctrine.
Bad faith: The applicant knew of the opponent’s prior rights and filed dishonestly to appropriate those rights.
Step 1: Notice of Opposition
The opponent files a Notice of Opposition in Form TM-O along with the prescribed government fee. The notice must specify the grounds of opposition and may include preliminary evidence.
The Registry serves a copy of the notice on the applicant.
Step 2: Counter Statement
The applicant has two months from the date of receipt of the Notice of Opposition to file a Counter Statement. The Counter Statement is the applicant’s formal response — it must directly address each ground raised and set out the applicant’s case.
Failing to file a Counter Statement within the prescribed time results in the application being treated as abandoned. This is one of the hardest outcomes to reverse, and it is avoidable only by acting promptly.
Step 3: Evidence Rounds
After the Counter Statement is filed, the matter enters the evidence stage. Each party has the opportunity to file evidence by way of affidavit:
The opponent files their evidence within two months of receipt of the Counter Statement. The applicant files their evidence in reply within two months of receipt of the opponent’s evidence. The opponent may file further evidence within one month (in reply to the applicant’s evidence), with the Registry’s leave.
Evidence typically includes: historical use documents, sales and marketing records, consumer affidavits, expert opinions, press and media coverage, and any other material relevant to establishing or refuting the claimed rights.
Step 4: Hearing
Once the evidence rounds are complete, the matter is listed for hearing before the Registrar or a designated Hearing Officer. Both parties (or their legal representatives) present oral arguments.
The Hearing Officer considers the evidence, the legal arguments, and the applicable law, and issues a written order.
Step 5: The Order and Appeal
The order may: Allow the application: The opposition is dismissed, and the registration certificate is issued. Refuse the application: The opposition is upheld, and the mark is refused registration.
Either party can appeal the order to the High Court (after the IPAB’s dissolution) within the prescribed period. The High Court hears such matters as original jurisdiction matters.
What Does This Mean For You?
If you’re the applicant: file the Counter Statement. Do not miss the two-month deadline. Engage a trademark attorney to prepare your Counter Statement and evidence — opposition proceedings require litigation expertise, not just filing skills.
If you’re the opponent: assess your opposition grounds carefully before filing. A groundless opposition can expose you to adverse cost orders, and the Registry’s process is lengthy. File only when your rights are genuinely at risk.
Opposition proceedings typically take anywhere from 1 to 4 years to conclude at the Registry level. It’s not a quick process, but it is a structured one — and one where thorough preparation and legal representation make a real difference to the outcome.