The Trade Marks Act, 1999 provides a comprehensive framework for the registration, protection, and enforcement of trademarks in India. One significant aspect of the trademark registration process is the opposition phase. While opposition can delay or even prevent the registration of a trademark, it does not necessarily prohibit the use of the mark by the applicant. This article explores the nuances of trademark opposition under the Trade Marks Act, 1999, with reference to case laws and legal updates.

Trademark Opposition under the Trade Marks Act, 1999

Trademark opposition is a legal procedure that allows third parties to challenge the registration of a trademark during the examination phase. According to Section 21 of the Trade Marks Act, any person may oppose the registration of a trademark within four months of its publication in the Trade Marks Journal. Opposition may be based on several grounds, including similarity to an existing mark, lack of distinctiveness, or deceptive nature.

The opposition procedure involves the following steps:

• Filing of Notice of Opposition: The opposing party (opponent) files a notice of opposition, detailing the grounds for opposition.
• Counter-Statement by Applicant: The applicant has two months to file a counter-statement defending the application.
• Evidence Submission and Hearing: Both parties may submit evidence in support of their case. The Registrar of Trademarks may hold a hearing before delivering a decision.
   

Opposition vs. Prohibition on Use of Trademark

A critical point to understand is that opposition to a trademark's registration does not equate to a prohibition on the use of that trademark. The opposition procedure only affects the registration of the mark, not its actual use.

• Right to Use During Opposition: The applicant can continue to use the trademark during the opposition process. The Trade Marks Act does not automatically prohibit the use of the mark merely because it is opposed. However, this use is at the applicant's risk, especially if the opposition is successful and the registration is denied. In such cases, the applicant may face infringement claims from the opponent or other parties.
   
• Section 28 - Rights Conferred by Registration: Section 28 of the Trade Marks Act provides that the registration of a trademark grants the exclusive right to the owner to use the trademark concerning the goods or services for which it is registered. This means that until the registration is completed, the applicant does not enjoy statutory rights or protections under the Act.

Supporting Legal Provisions
Section 34 of the Trademarks Act, 1999 - Prior Use of Trademark:
This section provides protection to prior users of a trademark, irrespective of its registration status. The right of a person to use a trademark is protected if they can prove continuous and prior use of the trademark before the registration date of the conflicting mark. This provision reinforces that usage of a trademark is independent of its registration status, and an opposition does not equate to a prohibition on its use.

Section 12 of the Trademark Act of 1999:
This section enables the Registrar to approve the registration of identical or similar trademarks by more than one owner under specific conditions. These situations may involve sincere simultaneous use or other specific circumstances that the Registrar considers suitable. The aim of this section is to make sure that legitimate owners who have been using a trademark in business for an extended period are still able to reap its advantages, even if it has already been registered.

Recent Case Laws on Trademark Opposition
Several court rulings have clarified the scope of opposition and its effect on the use of a trademark.

• Bata India Ltd. v. Chawla Boot House, (2019): In this case, the Delhi High Court held that opposition to a trademark does not automatically mean that the applicant is prohibited from using the trademark. The court emphasized that the opposition process is limited to determining whether the mark should be registered, not whether it can be used by the applicant.
   
• ITC Limited v. Nestlé India Limited, (2021): The case highlighted that an opposition is a challenge to the registrability of a trademark rather than its use. Here, the opposition was raised against the registration of "Maggi Magic" by ITC, but Nestlé was still allowed to use the mark pending resolution of the opposition.
   
• Skyline Education Institute v. S.L. Vaswani, (2010): The Supreme Court ruled that mere opposition or pendency of a registration application does not prevent an entity from using its trademark in business. However, if the opposition is successful and the registration is refused, the continued use of the mark may amount to infringement of the opponent's registered mark.
   
• Roca Sanitario S.A. vs Naresh Kumar Gupta, (2010): The Delhi High Court's decision in Roca Sanitario, S.A. v. Naresh Kumar Gupta emphasized that opposition proceedings are separate from the use of a trademark. While opposition may delay or prevent registration, it does not inherently prohibit the use of the mark. However, in cases of trademark infringement, the Court may grant an injunction to restrain the infringing use of the mark. The judgment reinforced the importance of establishing prior use and reputation in trademark disputes and provided clarity on the distinction between opposition and prohibition of use.

Point of View
The legal rationale for allowing the use of a trademark despite opposition to its registration is grounded in the distinction between the registration process and the rights associated with the use of a trademark. Opposition proceedings are administrative in nature and do not automatically prohibit the use of the trademark. As long as the use is legitimate and does not infringe on the rights of others, the trademark can continue to be used in commerce. This principle is supported by various provisions in the Trademarks Act, 1999 and has been upheld in numerous judicial decisions.

Conclusion
In conclusion, opposition to the registration of a trademark under the Trademarks Act, 1999, does not equate to a prohibition on its use. The opposition proceedings are intended to prevent the entry of potentially conflicting marks into the trademark register but do not directly interfere with the applicant's right to use the trademark unless a court of law issues a specific injunction. Therefore, the statement "opposition is not prohibition to use the trademark getting registered" is legally justified.

References:

1. Trade Marks Act, 1999
2. Bata India Ltd. v. Chawla Boot House, (2019), Delhi High Court
3. ITC Limited v. Nestlé India Limited, (2021), Delhi High Court
4. Skyline Education Institute v. S.L. Vaswani, (2010), Supreme Court of India
5. Roca Sanitario S.A. vs Naresh Kumar Gupta: IN THE HIGH COURT OF DELHI AT NEW DELHI 2010 SCC OnLine Del 1135
6. Trade Marks Rules, 2017 Amendments