Trademark Opposition is an integral stage involved in the process of trademark registration in India. As provided under Section 21 of the Trade Marks Act, 1999, an application for registration of a trademark can be opposed by any person, once the same has been published in the Trademarks Journal within a period of four months from the date on which the mark was advertised in the Journal. The application can be opposed by means of a notice of opposition. Once the notice of opposition is filed, the Trade Marks Registry is required to serve the notice of opposition on the applicant. Once the notice of opposition is served, the applicant is required to file a counter statement within two months from the date of service. This counter-statement is also filed at the Trade Marks Registry and the Trade Marks Registry is required to serve the counter-statement on the opponent. Within two months of the receipt of the counter-statement, the opponent is required to file evidence in support of the opposition. This evidence is required to be served by the opponent on the applicant and at the Trade Marks Registry within the stipulated period. Again within two months of the receipt of the evidence, from the opponent, the applicant is required to file the evidence in support of the application and serve a copy of this evidence on the opponent. On receipt of the copy of evidence from the applicant, the opponent is now required to file evidence in reply to the evidence filed by the applicant within one month from the date of receipt. This completes the pleadings in an opposition case and thereafter the matter is set down for hearing. The decision of the Registrar of Trademarks is based after considering the evidence placed on record by both parties.
It is a common practice that in order to prove the distinctiveness of a trademark by its usage, financial evidence such as advertising and marketing expenses, turnover, and sales over the years are presented. Such evidence may show the scale of use of a trademark but does not alone suffice to prove distinctiveness. Hence, in order to prove distinctiveness it is pertinent to note that the public should associate a mark/trademark with the proprietor as the origin of goods or services.
In the case of Rajinder Kumar Aggarwal vs. Union of India & Anothers, proprietors Ashok Kumar Aggarwal and Vinod Kumar Aggarwal owned a sweets shop in Tilak Nagar, New Delhi. They filed for registration of the trademark with the name “Aggarwal and Aggarwal Sweet corner” in the trademark office and were granted the same. The aggrieved party, Rajendra Kumar Aggarwal, a proprietor of “Aggarwal Sweets India”, New Delhi filed an opposition in the trademark office against this trademark. The trademark office rejected the opposition. In an appeal made to the Intellectual Property Appellate Board (hereinafter referred as ‘IPAB’), the opposition was dismissed again on the grounds that the surname “Aggarwal” could be registered as a trademark as proprietors Ashok Kumar Aggarwal and Vinod Kumar Aggarwal had established evidence to show that they have been using the mark “Aggarwal and Aggarwal Sweet Corner for a considerable period of time. Thereafter, Rajendra Kumar Aggarwal filed a writ petition in the Delhi High Court against the order of the IPAB. The Court after considering the evidence submitted by both parties observed that; “Though a surname can be registered as a trademark only after achieving distinctiveness as per Section 9(1) read with 9(2) of the 1958 Act, mere evidence of usage of a particular word is not enough to prove distinctiveness in a particular trade. The concept that usage equals distinctiveness is stated as an illogical assumption. In order to prove distinctiveness, the evidence must be a combination of the scale of use provided as well as the distinction of the trademark in relation to the service in advertising and promotion.”
Hence, the Delhi High Court set aside the impugned order of the Appellate Board as the ‘evidence of distinctiveness’ was not examined by the Appellate Board while rejecting Rajendra Kumar Aggarwal’s appeal. The matter was remanded to the Appellate Board for considering the question as to whether the word “Aggarwal” has acquired sufficient distinctiveness in relation to the goods of Aggarwal brothers and whether it ought to be remain registered.
Therefore, appropriate evidence is a very valuable component of opposition proceedings in deciding whether a trademark has acquired distinctiveness or not. Apart from financial values, the quality of evidence is also important. Sometimes selection of a proper trademark is also critical. In some cases, no amount of evidence can make a common
