When a trademark is published in the Trade Marks Journal, any person may file a notice of opposition on Form TM-O within four months under Section 21 of the Trade Marks Act 1999. The applicant must file a counter-statement, followed by structured evidence rounds and a hearing before the Registrar.
Opposition proceedings under Section 21 follow a structured adversarial format: notice of opposition on Form TM-O within four months of journal publication, counter-statement by the applicant within two months, evidence in support by the opponent, evidence in reply by the applicant, evidence in rejoinder by the opponent (if any), and an oral hearing before the Registrar. Grounds of opposition may include prior rights under Section 11, absolute grounds under Section 9, bad faith, non-use by the applicant or the descriptive or deceptive nature of the mark.
AMLEGALS represents both opponents seeking to block registration and applicants defending their marks through the opposition process. The practice covers drafting opposition notices and counter-statements, managing the evidence calendar, preparing for and appearing at hearings before the Registrar, and advising on appeal strategy before the High Court following the abolition of the IPAB (abolished 2021, Tribunals Reforms Act).
Evaluating the published mark, assessing grounds and advising on the merits and timing of filing opposition.
Drafting and filing Form TM-O with particularised grounds under Sections 9 and 11.
Preparing the applicant's counter-statement addressing each ground of opposition.
Preparing affidavit evidence, exhibits and market-survey evidence across the three evidence stages.
Appearing before the Registrar at the oral hearing and presenting legal and factual arguments.
Advising on and filing appeals to the High Court against the Registrar's decision.
Any person — individual, company, partnership or other legal entity — may file a notice of opposition under Section 21 of the Trade Marks Act 1999. There is no requirement that the opponent be the proprietor of a registered trademark; an opponent can rely on common-law rights, prior use, or public-interest grounds.
The notice of opposition on Form TM-O must be filed within four months from the date of publication of the trademark in the Trade Marks Journal. This period is not extendable.
Opposition can be filed on any ground on which the Registrar could have refused registration: absolute grounds under Section 9 (lack of distinctiveness, descriptiveness, deceptiveness), relative grounds under Section 11 (similarity to an earlier mark for the same or similar goods or services and likelihood of confusion), bad faith, Section 12 (honest concurrent use) and non-compliance with filing requirements.
The Registrar issues a written decision either allowing or refusing the registration. The unsuccessful party may appeal to the High Court having jurisdiction within three months of the order.
Yes. The parties may settle at any stage. If the opponent withdraws the opposition, the mark proceeds to registration. Settlement terms are a matter between the parties.
No. No engagement is treated as accepted until conflicts, scope and terms are confirmed in writing.
Share the details for a confidential assessment.