Form TM-O: Opposition, Counter-Statement and Rectification

Short answer: Form TM-O is the Trade Marks Rules, 2017 form for a notice of opposition (within four months of the Journal advertisement, Section 21(1)), the applicant's counter-statement (within two months of receiving the opposition, Section 21(2)), and applications to rectify or remove a registered mark. The official fee is Rs 2,700 per class when e-filed and Rs 3,000 on paper.

What Form TM-O is used for

In the Trade Marks Rules, 2017, Form TM-O is titled "Opposition / Application for Rectification of the Register / Counter statement / Refusal or invalidation of a trademark" under the Geographical Indications Act. The same form is used by the opponent, the applicant, the registered proprietor and, in some cases, a third party. Its "Purpose" column has three parts: (a) filing an opposition or rectification, (b) filing a counter-statement, and (c) a request to refuse or invalidate a mark that conflicts with a geographical indication.

Every TM-O filing carries the same First Schedule fee: Rs 2,700 per class for e-filing and Rs 3,000 per class on paper. The fee applies to each class opposed and to each class in which a counter-statement is filed.

Notice of opposition: deadline, contents and fee

Any person can oppose. The opponent does not need a registered mark of its own. The notice must be filed within four months from the date of the Trade Marks Journal in which the application was advertised or re-advertised (Section 21(1) as amended in 2010, Rule 42(1)). The Act fixes this period itself, so it cannot be extended. For a multi-class application, the fee is payable for each class opposed (Rule 42(2)).

Rule 43 lists what the notice must contain. The grounds usually rest on Section 9 (the mark is descriptive, non-distinctive or deceptive), Section 11 (conflict with an earlier mark, a well-known mark or passing-off rights) or a challenge to the applicant's claim to proprietorship. A ready structure is in the TM-O notice of opposition grounds draft.

• The opposed application: number, the goods or services opposed, and the applicant's name.
• The earlier mark or right relied on: number, filing or priority date, status and a representation of the mark. If the mark is claimed to be well known or to have a reputation, say so, and for a well-known claim name the countries where it is recognised.
• The opponent's capacity: proprietor, licensee authorised to oppose, or successor in title not yet recorded. An opponent with no place of business in India must give an address for service in India.
• Verification at the foot, stating which paragraphs are within the opponent's own knowledge and which rest on information believed to be true, with the date and place of signing (Rule 43(2)-(4)).

Counter-statement: the applicant's reply on Form TM-O

The Registrar ordinarily serves a copy of the opposition on the applicant within three months of receiving it. If the applicant has already filed a counter-statement using the copy available in the online records, formal service is not needed (Rule 42(5)). The applicant then has two months from receipt of that copy to file a counter-statement on Form TM-O. If it does not, the application is deemed abandoned (Section 21(2), Rule 44). Rule 18 allows the Registry to serve documents by email and treats service as complete when the email is sent, so the inbox on record needs to be watched closely.

The counter-statement must say which facts in the opposition are admitted. A good one answers the notice paragraph by paragraph and sets out the applicant's own case: adoption, use, honest concurrent use, or dissimilarity of the marks and goods. It is verified the same way as the notice (Rule 44(2)). See the para-wise counter-statement format and what the Opposed status means on the e-register.

If only some classes of a multi-class application are opposed, the unopposed classes go to registration only after the applicant requests division of the application on Form TM-M with the divisional fee (Rule 42(3)-(4)).

After TM-O: the evidence stage (Rules 45 to 50)

After the counter-statement, both sides file evidence by affidavit. Each side may instead tell the Registrar and the other side in writing that it will rely on its pleadings. Copies of evidence, with exhibits, must be delivered to the other side and the Registrar told in writing that this has been done. Documents in a language other than Hindi or English need an attested translation (Rule 49).

• Hearing: the first hearing notice must give at least one month. An adjournment is requested on Form TM-M at least three days before the hearing, with no more than two adjournments of up to 30 days each (Rule 50). See the hearing adjournment request.
• If the applicant is absent at the adjourned hearing, the application may be treated as abandoned. If the opponent is absent, the opposition may be dismissed (Rule 50(3)-(4)).

Rectification and removal on Form TM-O

Once a mark is registered, opposition is no longer available. A person aggrieved can apply instead to remove or rectify the entry. Section 47 allows removal for non-use: either the mark was registered without a bona fide intention to use and was never used, or it went unused for a continuous five years from its entry on the register. In both cases the period is counted up to three months before the application. Section 57 covers cancelling or varying a registration where a condition entered on the register has been breached, and correcting an entry made without sufficient cause, wrongly remaining on the register, or containing an error or defect. Since the Tribunals Reforms Act, 2021 abolished the IPAB, these applications go to the Registrar or the High Court. Before the Registrar, Form TM-O is used.

Under Rule 97, the application must be filed with a statement setting out the applicant's interest, the facts and the relief sought. It must be verified like a notice of opposition, with extra copies for any registered users. Under Rule 98, the registered proprietor files a counter-statement on Form TM-O within two months of receiving the application, or within a further period of up to one month if the Registrar allows it. The evidence and hearing rules (Rules 45 to 51) then apply. If no counter-statement is filed, the applicant still has to file evidence. A model is in the non-use rectification draft.

What to attach, and common mistakes

For a full view of how objections, oppositions and rectification connect, see trademark objection and opposition. The usual attachments and errors are below.

• Attach a copy of the Journal publication (the form asks for it), the detailed and verified grounds or counter-statement, the agent's authorisation where an agent or advocate files, and copies of any earlier registrations relied on.
• Counting four months from the wrong date. Count from the date of the Journal issue, not from the date a watch report was received.
• Paying the fee for one class while opposing several.
• Unsigned or unverified grounds, or a licensee opposing without showing authorisation.
• Bare denials in a counter-statement instead of a positive case on adoption and use.
• Treating evidence deadlines as flexible. Missing Rule 45 or 46 leads to deemed abandonment.
• Missing a Registry email sent to an old address for service.