Introduction
Trademarks in India are governed by the Trade Marks Act, 1999, and its procedural aspects are covered under the Trade Marks Rules, 2017. Trademark opposition is a critical process where a third party can challenge a proposed trademark before registration. Evidence plays a key role in supporting an opposition or defending an application. This article explores the relevance of evidence in opposition proceedings under Rules 46 and 47, their link with Rule 45, filing procedures, and the necessity of hard copies.
Understanding Evidence Under Rule 46
Rule 46 of the Trade Marks Rules, 2017, requires the opponent to submit evidence supporting their objection against a trademark application. This ensures that the opposition is based on substantial proof rather than unverified claims.
Why Is Rule 46 Important?
- Allows the opponent to provide factual grounds for opposition.
- Supports claims of prior usage, similarity, mala fide intent, or misdescription.
- Enables the Registrar to decide based on prima facie evidence.
- Failure to submit evidence may lead to the abandonment of opposition.
Mandatory Requirements for Evidence Under Rule 46
- Must be submitted as affidavits along with supporting documents.
- Should include registration certificates, invoices, advertisements, and reputation proof.
- The opponent may rely on the averments made in the notice of opposition.
The Role of Rule 47 in Trademark Opposition
Rule 47 allows the applicant to submit counter-evidence in reply to the opposition, strengthening their case in favor of trademark registration.
Why File Under Rule 47?
- To counter claims made by the opponent.
- To prove the distinctiveness and bona fide use of the trademark.
- To show that the applied mark does not create confusion in the market.
- Prevents rejection based solely on the opponent’s evidence.
Is Filing Under Rule 47 Mandatory?
No, but it is highly recommended. If the applicant does not respond, the Registrar may decide the matter solely based on the opponent’s evidence.
Benefits of Filing Evidence Under Rule 47
- Strengthens the applicant’s position in opposition proceedings.
- Establishes genuine commercial use of the trademark.
- Reduces the risk of losing the trademark application.
Filing of Evidence Under Rules 45, 46, and 47: Hard Copy Requirement
As per Rule 108 of the Trade Marks Rules, 2017:
- Evidence can be filed electronically via the Trade Marks Registry e-filing system.
- Hard copies are generally not required unless specifically requested by the Registrar.
- Keeping hard copies for reference is advisable.
Filing Fees Under Rule 46 and Rule 47
There are no government fees for filing evidence under Rule 46 or Rule 47. However, additional costs may include:
- Professional fees for drafting affidavits.
- Notarization and legal verification costs.
- Incidental expenses for document submission.
Stepwise Guide for Filing Evidence Under Rule 46 and Rule 47
1. Preparation of the Affidavit
- Prepare a sworn statement outlining opposition grounds (Rule 46) or defense grounds (Rule 47).
- Attach documentary evidence such as prior registration certificates, advertisements, and financial records.
2. Notarization (If Required)
Get the affidavit notarized if necessary.
3. Convert to Digital Format
Scan and convert all documents into a single PDF for e-filing.
4. Open IP India e-Filing Portal
5. Upload the Documents
- Select the relevant opposition case number.
- Attach the scanned affidavit and supporting documents.
6. Submit the Evidence
- Review the uploaded documents before final submission.
- Obtain an acknowledgment receipt for reference.
7. Track the Application
- Monitor the opposition status through the online portal.
- Respond promptly to any queries from the Registrar.
8. Submission of Hard Copies (If Requested)
- Deliver signed and notarized copies to the Trade Marks Registry if required.
Conclusion
Submitting proper evidence under Rules 45, 46, and 47 plays a crucial role in determining the outcome of a trademark opposition case. Each document serves as proof to either support or defend the application, influencing the final decision.
Although hard copies are generally not required, maintaining a physical set ensures compliance with procedural requirements. Adhering to proper filing procedures improves the chances of a favorable ruling and safeguards trademark rights.
