Trademark - Counter Statement to the Opposition

What is a Counter-Statement? 

A counter-statement is the reply to the notice of opposition, which must be filed by the applicant within two months of receipt of the notice of opposition by way of Form TM-O. The provision of filing an extension to file a counterstatement has been done away with. Accordingly, if the applicant fails to file its counter statement with two months of service of the opposition, its trademark is deemed to have been abandoned for non-prosecution. Alternatively, if the applicant files the counter-statement, the opposition will proceed to the evidence stage. After submission of the counter-statement, the registrar shall upon review and if all the formalities are met, serve a copy of the counter-statement on the opponent ordinarily within two months from the date of receipt of the same. Then, the opponent is required to file the evidence in support of his opposition and upon receipt of such evidence, the applicant will file evidence in support of the application and the matter will be referred for the hearing. If the opponent does not file any evidence, the opposition will be deemed to be abandoned. 

The counter-statement shall typically comprise the following:

  1. Set out the facts, if any facts alleged in the notice of opposition are admitted by the applicant.
  2. A paragraph-wise counter of each of the grounds made in the notice of opposition.
  3. The counter-statement shall be verified at the foot by the opponent or by his duly authorized agent who shall specifically state, referring to the numbered paragraphs of the notice of the opposition, what he verifies of his own knowledge and what he verifies upon information received and believed to be true.
  4. The verification shall be signed by the person making it and shall state the date on which and the place at which it was signed.

Documents required:

  1. Trademark application number against which opposition filed. 
  2. ID (PAN/Aadhar) and Address Proof (Driving License/ Utility Bill/Bank Statement) of the person filing the counter statement. 
  3. Email Id and Mobile Number. 
  4. Grounds of reply. 
  5. Power of Attorney:A signed POA is required in favor of our registered trademark attorney or agent to allow us to file the counter statement on your behalf. Once you make the payment and provide other documents, we will draft a POA and send it for your signatures. 
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