Module 7

MODULE 7

TRIBUNAL PROCEEDINGS (OPPOSITION AND RECTIFICATIONS PROCEDURES),
PROCESS FOR REVIEW, HEARINGS, IPAB AND APPEALS

7.1 OPPOSITION

Opposition to a trademark application can only be filed within the 4 (four) months of
advertisement of application in the Trademark Journal. The person filing the notice of opposition
will be termed as the “Opponent”.

Under section 21(1) of the Trademark Act, 1999, anyone can oppose a trademark application and
need not have any locus standi to oppose the said application. The opponent need not have any
commercial or personal interest in the matter or be a prior registered trademark owner.

The notice of opposition can be filed in Form TM-O by paying a fee of INR 3000 per class,
when filed over the counter or INR 2700, when filed electronically. Form TM-O is filed at the
same branch where the application is filed.

7.2 GROUNDS OF OPPOSITION

The opponent can rely on any reasonable ground in the notice of opposition. However, the
relevant provisions of Trademarks Act, 1999 should be kept in mind while filing the notice of
opposition as the Registrar will ultimately administer a decision under the provisions of the Act,.
The possible grounds of opposition are as follows-

• Absolute grounds under section 9- A mark may be opposed due to its incapability as a
trademark and its inherent nature. Broadly, under absolute grounds, the mark must satisfy
the following criteria-

a. A sign must constitute a trademark or capable of graphic representation;

b. A trademark must have a distinctive character;

c. Must not be descriptive;

d. Must not be customary in current language;

e. Trademark cannot be registered for reasons like being contrary to public policy

• Relative grounds under section 11- These grounds provide protection to trademark
through prior registration or prior right. The relative grounds of opposition are-

a. Marks in conflicts with a prior right in another trademark or other distinctive sign
will also be rejected

b. Marks which are identical or relate to a similar kind of goods or services of an
earlier trademark, which would create confusion to the consumer, including the
possibility of association to earlier trademark will not be protected as a trademark.

• Prohibitions under section 13- The mark made up of chemical name or formula shall
not be registered as a trademark.

• Absence of consent in writing in section 14- This provision requires the applicant to
introduce his true connection with the trademark applied for registration.

• Objection under section 18 (1) with regard to the proprietorship of the trademark
opposed.

Requirement of notice of opposition are given under Rule 43 of the Trademark Rules, 2017
which states that there are certain conditions which a notice of opposition should fulfil. Not
adhering to Rule 43 is a procedural lapse. A breakdown of Rule 43 is given below-

Rule 43 Requirements of Notice of Opposition.— (1) A notice of opposition shall contain,—

(a). in respect of an application against which opposition is entered—

i. the application number against which opposition is entered;

ii. an indication of the goods or services listed in the trademark application
against which opposition is entered; and

iii. the name of the applicant for the trademark.

Rule 43(1)(a) states that if a mark is being opposed, the following details should be mentioned in
the notice of opposition-

a. Application number
b. The specifications of goods and services the applicant has applied for
c. The name of the applicant

It does not mention that the user or the date of application should be mentioned.

(b). in respect of the earlier trademark or the earlier right on which the opposition is based,—

(i) where the opposition is based on an earlier trademark, a statement to that effect and an
indication of the status of earlier trademark;

(ii) where available, the application number or registration number and the filing date, including
the priority date of the earlier trademark;

(iii) where the opposition is based on an earlier trademark which is alleged to be a well-known
trademark within the meaning of sub-section 2 of section 11, an indication to that effect and an
indication of the country or countries in which the earlier trademark is recognised to be well
known;

(iv) where the opposition is based on an earlier trademark having a reputation within the
meaning of paragraph (b) of sub-clause (2) of section 11 of the Act, an indication to that effect
and an indication of whether the earlier trademark is registered or applied for;

(v) a representation of the trademark of the opponent and where appropriate, a description of
the trademark or earlier right; and

(vi) Where the goods or services in respect of which earlier trademark has been registered or
applied for or in respect of which the earlier trademark is well known within the meaning of sub-

section (2) of section 11 or has a reputation within the meaning of that section, the opponent
shall when indicating all the goods or services for which the earlier trademark is protected, also
indicate those goods or services on which the opposition is based.

When a trademark application is being opposed on the ground of prior trademark or prior right,
the trademark registration is required to be mentioned to show that a prior registration exists.
However, if a trademark application is being mentioned in the opposition, the following factors
need to be kept in mind-

• Application number
• Status of the mark i.e. objected, registered etc.
• Filing date and priority date of the application

It is important to understand what constitutes an earlier mark. An earlier trademark as defined
under Section 11(4) of the Trademarks Act, 1999 is reproduced below-

(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of
the earlier trade mark or other earlier right consents to the registration, and in such case the
Registrar may register the mark under special circumstances under section 12.

Explanation.- For the purposes of this section, earlier trade mark means-

(a) a registered trade mark or convention application referred to in section 154 which has a date
of application earlier than that of the trade mark in question, taking account, where appropriate,
of the priorities claimed in respect of the trade marks.

So, unless the trademark registration has the date of application prior to the application that is
being opposed, it will not be considered an earlier mark.

Now, in the reference to an earlier mark under section 11(2)(b) of the Trademarks Act, 1999:

Section 11(2)(b)- A trademark which is to be registered for goods or services which are not
similar to those for which the earlier trade mark is registered in the name of a different
proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade

mark in India and the use of the later mark without due course would take unfair advantage of or
be detrimental to the distinctive character or repute of the earlier trade mark.

This provisions gives an upper-hand to a well-known trademark.

(c). in respect of the opposing party—

(i) where the opposition is entered by the proprietor of the earlier trademark or of the earlier
right, his name and address and an indication that he is the proprietor of such trademark or
right;

(ii) where opposition is entered by a licensee not being a registered user, the name of the
licensee and his address and an indication that he has been authorised to enter the opposition;

(iii) where the opposition is entered by the successor in title to the registered proprietor of a
trademark who has not yet been registered as new proprietor, an indication to that effect, the
name and address of the opposing party and an indication of the date on which the application
for registration of the new proprietor was received by the appropriate office or, where this
information is not available, was sent to the appropriate office; and

(iv) where the opposing party has no place of business in India, the name of the opponents and
his address for service in India.

You should specify your ownership of the mark i.e. you should specify if you are a registered
user or a successor of the mark, through a merger or death of the previous proprietor.

(d). The grounds on which the opposition is based.

(2) A notice of opposition shall be verified at the foot by the opponent or by his duly authorised
agent.

(3) The person verifying shall state specifically by reference to the numbered paragraphs of the
notice of 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.

This is an important aspect of a notice of opposition as it is imperative to put the verification
clause at the end of the notice. The Apex Court, comprising three Judges Bench, in the case of
S.R. Ramaraj v. Special Court, Bombay1, have inter alia, observed that, “A person is under a
legal obligation to verify the allegations of fact made in the pleadings and if he verifies falsely,
he comes under the clutches of law”. Hence, it must be ensured that the verification clause is
properly defined and put in place, as its absence could lead to a procedural lapse. However, the
same can be rectified at any stage in the proceedings and will not have grave consequences on
the opposition matter.

Can an attorney sign on behalf of the Opponent?

The law of agency has been laid down under section 145 of the Trademarks Act, 1999 which
states that:

Section 145. Agents

Where, by or under this Act, any act, other than the making of an affidavit, is required to be done
before the Registrar by any person, the act may, subject to the rules made in this behalf, be done
instead of by that person himself, by a person duly authorised in the prescribed manner, who is-

(a) a legal practitioner, or

(b) a person registered in the prescribed manner as a trade marks agent, or

(c) a person in the sole and regular employment of the principal.

Therefore, three individuals are authorized to sign on behalf of the applicant/opponent- Legal
Practitioner/Advocate, Trademark Agent and the person in sole and regular employment.
However, the above-mentioned individuals must be authorized in the prescribed matter subject to
the rules.

1 S.R. Ramaraj v. Special Court, Bombay, Criminal Appeal No. 1491 of 1996.

Rule 19: (1) The authorisation of an agent for the purpose of section 145 shall be executed in
Form TM-M.

1) In the case of such authorisation, service upon the agent of any document relating to the
proceeding or matter shall be deemed to be service upon the person so authorising him;
all communications directed to be made to such person in respect of the proceeding or
matter may be addressed to such agent, and all appearances before Registrar relating
thereto may be made by or through such agent.

2) In any particular case, the Registrar may require the personal signature or presence of
an applicant, opponent, proprietor, registered user or other person.

3) In case of withdrawal by the agent from the proceedings or from doing any act for which
he has been authorised, in respect of an application or opposition wherein no principle
place of business in India is mentioned, the applicant or opponent shall, within a period
of two months from the date of such withdrawal, provide an address for service in India.
If he fails to provide address for service in India within such period, he shall be deemed
to have abandoned the application or opposition, as the case may be.

4) In case of revocation of authorisation by the applicant or opponent in respect of an
application or opposition wherein no principle place of business in India is mentioned,
the applicant or opponent, as the case may be, shall provide the address for service in
India within a period of two months from such revocation. If he fails to provide address
for service in India within such period, he shall be deemed to have abandoned the
application or opposition, as the case may be

Therefore, the authorization or Power of Attorney need to be in the format of TM-M
(Authorization of Agent), and once the same is filed, the address of service will become that of
the agent. Additionally, the Registrar can request the presence of the party. The agent has a right
of withdrawal of the said agency as well.

Rule 44 which deals with counter statement reiterates the same requirements as a notice of
opposition. Rule 44(2) is reproduced below-

Rule 44 (2) The counterstatement shall be verified in the manner as provided in sub-rules (2), (3)
and (4) of rule 43.

7.3 OPPOSITION PROCEDURE

Once the opposition to the trademark application has been filed, the same will be served by the
Trademark Office to the Applicant to his Address of service. The applicant has a time period of 2
(two) months from the date of service to file a counter statement to the notice of opposition
(Under section 21(1) of the Trademarks Act, 1999). The counter statement has to be filed in
Form TM-O by paying the fee of INR 3000 per class or INR 2700 through e-filing. If the
applicant does not file a counter statement within the specified time frame, the trademark
application is deemed to have been abandoned.2

Once the Trademark Office receives the counter statement, it serves a copy to the opponent. The
opponent can then file evidence in support of opposition within 2 months of receipt of counter
statement under Rule 45(1) of the Trademark Rules, 2017. If the opponent does not file a
evidence in support of opposition within the specified time frame, the opposition is deemed to
have been abandoned.3

Once the Trademark Office receives the evidence in support of opposition, the same is served on
the applicant. The applicant is then required to file evidence in support of application4 within 2
months. If the applicant fails to do so, the application is deemed to have been abandoned.

Once the Trademark Office receives the evidence in support of application, the same is served on
the opposition. The opposition has the option of filing evidence in reply.5 There is also an option
for “further evidence”. 6 However, the same can only be filed with the permission of the
Registrar.

2 Trademarks Act, 1999, s. 21(2).
3 Trademark Rules, 2017, Rule 45(2).
4 Trademark Rules, 2017, Rule 46.
5 Trademark Rules, 2017, Rule 47.
6 Trademark Rules, 2017, Rule 48.

The matter then proceeds for hearing and the date of hearing is scheduled. The respective parties
are notified through hearing notice. Both parties have the liberty to file written arguments. Each
party is allowed to seek maximum 2 adjournments and each adjournment should not be more
than 30 days. Parties can seek adjournment by filing an extension of time application under Form
TM-M.7

7.4 RECTIFICATION

In case a mark has been wrongly registered or has remained on the Register even after its expiry,
the Trademarks Act provides the option of filing rectification of the registered trademarks. If the
applicant misses the four months’ time period for rectification, he can file a
rectification/cancellation application.

7.4.1. Grounds for filing a Rectification

A registered trademark is open for cancellation on the application of a person aggrieved if the
mark has been wrongly registered or has wrongly remained in the Trademark Register. The
person aggrieved is required to show that the mark was registered in contravention of the
Trademarks Act or any other law. Furthermore, the applicant can show that a mark, though
validly registered, for the change in circumstances, has become bad and liable to be rectified or
cancelled.

The aggrieved person has the option of filing for cancellation petition before the Registrar of
Trademark or before the Intellectual Property Appellate Board (IPAB). The decision of the
Registrar of Trademarks is appealable before the IPAB. The Trademarks Act does not provide
for any appeal against the order of IPAB. However, a writ petition is maintainable before the
jurisdictional High Court as well. In Chennai, Mumbai and Kolkata, such petitions are heard by a
Division Bench, in Delhi High Court, they are heard by a single Judge.

A request under section 47 may be filed before tribunal (the Registrar or the IPAB) for
rectification of register by removal of the mark for non-use or under section 57 or 58 for

7 Trademark Rules, 2017, Rule 50.

rectification of or correction in the Register. Section 57 deals with the situations where the initial
registration should not have been made or was made incorrectly. Such situations include-

a. the contravention or failure to observe a condition for registration;
b. the absence of an entry;
c. an entry made without sufficient cause;
d. a wrong entry; and
e. any error or defect in the entry.

Section 58 deals with-

a. Correction of any error in the name, address or description of the registered proprietor of
a trade mark, or any other entry relating to trade mark;

b. Entering any change in the name, address or description of the person who is registered
as proprietor of a trade mark;

c. Cancelling the entry of a trade mark on the register;
d. Striking out any goods or classes of goods or services from those in respect of which a

trademark is registered, and may make any consequential amendment or alteration in the
certificate of registration, and for that purpose, may require the certificate of registration
to be produced to him.

A registered collective mark may also be removed from the register on the following grounds-

a. The manner in which the collective mark has been used by the proprietor or authorized
user has caused it to become liable to mislead the public as a collective mark; or

b. That the proprietor has failed to observe, or to secure the observance of the regulations
governing the use of the mark.

7.4.2. Who is a “person aggrieved”?

In an opposition proceeding, the person filing the opposition does not need to have any locus
standi to file the opposition and could be doing the same in the public interest. However, in a
rectification proceeding, the person filing the rectification needs to have a locus standi. This is
where the concept of “Person aggrieved” comes into the picture. The term “Person aggrieved”

has been liberally interpreted by the Courts. The Supreme Court in Hardie Trading Ltd. and Anr
v. Addisons Paint and Chemicals Ltd8 stated that

In our opinion the phrase "person aggrieved" for the purposes of removal on the ground of non-
use under section 46 (Section 47 in the Trade Marks Act, 1999) has a different connotation from
the phrase used in section 56 (Section 57 in the Trade Marks Act, 1999) for cancelling or
expunging or varying an entry wrongly made or remaining in the Register.

In the latter case the locus standi would be ascertained liberally, since it would not only be
against the interest of other persons carrying on the same trade but also in the interest of the
public to have such wrongful entry removed. It was in this sense that the House of Lords defined
"person aggrieved" in the matter of Powell's Trade Mark, (1894) 11 RFC 4 :

"... although they were no doubt inserted to prevent officious interference by those who had no
interest at all in the Register being correct, and to exclude a mere common informer, it is
undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public
mischief that there should remain upon the Register a Mark which ought not to be there, and by
which many persons may be affected, who, nevertheless, would not be willing to enter upon the
risk and expense of litigation.

Wherever it can be shown, as here, that the Applicant is in the same trade as the person who has
registered the Trade mark, and wherever the Trade Mark, if remaining on the Register, would,
or might, limit the legal rights of the Applicant, so that by reason, of the existence of the entry on
the Register he could not lawfully do that which, but for the existence of the mark upon the
Register, he could lawfully do, it appears to me he has a locus standi to be heard as a person
aggrieved."

(Emphasis added) But if the ground for rectification is merely based on non-user i.e. under
Section 46 of the Act, that is not really on account of any public mischief by way of an incorrect
entry. The non-user does not by itself render the entry incorrect but it gives a right to a person
whose interest is affected to apply for its removal. An applicant must therefore show that "in
some possible way he may be damaged or injured if the Trade Mark is allowed to stand; and by

8 Hardie Trading Ltd. and Anr v. Addisons Paint and Chemicals Ltd., Civil Appeal Nos. 5307-11 of 1993.

"possible" I mean possible in a practical sense, and not merely in a fantastic view..... All cases of
this kind, where the original registration is not illegal or improper, ought to be considered as
questions of common sense, to a certain extent, at any rate; and I think the Applicants ought to
show something approaching a sufficient or proper reason for applying to have the Trade Mark
expunged. It certainly is not sufficient reason that they are at loggerheads with the Respondents
or desire in some way to injure them.'"

The Supreme Court again upheld the same test in Infosys Technologies Ltd vs Jupiter Infosys
Ltd. & Anr9.:

“He must be one whose interest is affected in some possible way; it must not be a fanciful
suggestion of grievance. A likelihood of some injury or damage to the applicant by such trade
mark remaining on the register may meet the test of locus standi. In Kerly's Law of Trade Marks
and Trade Names (11th edition) at page 166, the legal position with regard to `person aggrieved'
has been summarized thus : The persons who are aggrieved are all persons who are in some way
or the other substantially interested in having the mark removed - where it is a question of
removal - from the register; including all persons who would be substantially damaged if the
mark remained, and all trade rivals over whom an advantage was gained by a trader who was
getting the benefit of a registered trade mark to which he was not entitled. We accept the above
statement of law.”

Justice Manmohan Singh of the Delhi High Court in Adidas Ag vs Union of India & Anr.10
clearly stated that

“This Court is of the opinion that the expression "person aggrieved" is a term of wide amplitude
and an applicant for registration whose trademark has been objected or refused by reason of
prior registration by a third party of the same or similar or identical mark for the same goods or
description of the goods or whose application for registration is opposed on the basis of prior
registration of the same or similar mark by the registry is a person aggrieved. The IPAB‟s
further finding that even when the marks and goods are identical, there is no person aggrieved
is, in the opinion of this Court, contrary to law.”

9 Infosys Technologies Ltd vs Jupiter Infosys Ltd. & Anr., Civil Appeal nos. 5743-5745 of 2005.
10 Adidas Ag vs Union of India & Anr., W.P.(C) 3125/2013.

Furthermore, the IPAB in Amit Sood v. Roshan Potraits11 was of the opinion that-

“On the issue of ‘person aggrieved’ since both the applicant and respondent own identical mark
for identical good, a clear cut case is self-evident to rule that the applicant has the locus to move
a petition for cancellation of the impugned trade mark”

The procedure to file for Rectification is as follows-

I. Section 47- Under section 47, a trademark not used within five years of its
registration is liable to be removed from the Register. Please note that this date is
calculated from the date the trademark is registered or entered in the register and
not from the date of application.

II. Section 57(1) and 57(2)- Under section 57(1) and 57(2), a “person aggrieved”
may make an application for canceling or varying the registration of a trademark
on the ground of any contravention or failure to observe the conditions entered on
the register or by absence or omission from the register any entry or by any entry
made in the register without sufficient cause, or by any entry wrongly remaining
on the register, or by any error or defect in any entry in the register.

III. Section 57(4)- The Tribunal (the Registrar or the Appellate Board), on its own
motion, after giving a notice to the parties concerned and giving them an
opportunity of hearing, may make any order

The rectification petition is to be filed on a TM-O with the fees of INR 2700 through e-filing.12

Rule 97 of the Trademark Rules, 2017-

Within two months from the receipt by a registered proprietor of the copy of the application
mentioned in rule 97 or within such further period not exceeding one month in the aggregate, he
shall send to the Registrar on Form TM-O a counter-statement of the grounds on which the
application is contested.

11 Amit Sood v. Roshan Potraits, M.P.No.28 of 2011 in ORA/8 of 2009/TM/DEL & ORA/8 of 2009/TM/DEL.
12 Trademark Rules, 2017, Rule 97.

Then Registrar shall then serve a copy of the counterstatement on the person making the
application within one month of the receipt of the same. In case no counter statement has been
filed within the period of three months from the date of receipt of the application mentioned in
Rule 97, the applicant for rectification shall file evidence in support of his application for
rectification under Rule 45(1). The provisions under rules 46 to 51 shall thereafter apply mutatis
mutandis to the further proceedings on the application.

The procedure for fixing and conducting hearing, adjournment of hearing and the disposal of
application for rectification is same as followed in opposition proceeding.

7.5 REVIEW

An application for review of decision issued by the Registrar is generally considered by the same
officer who has passed the impugned decision. The power of review is limited and only meant to
be exercised as a discretionary one. Section 127 of the Trademarks Act, 1999 is the relevant
provision for the same-

“Section 127. Powers of Registrar. —In all proceedings under this Act before the Registrar, —

(c) the Registrar may, on an application made in the prescribed manner, review his own
decision”

The review petition is to be filed in 30 (thirty) days’ time and should include the grounds under
which review is requested. The use of the word “may” implies that the Registrar can choose not
to listen the review petition. The method for applying for review is enshrined in Rule 119 of the
Trademark Rules, 2017-

“Rule 119: Application for review of Registrar's decision.

An application to the Registrar for the review of his decision under sub-section (c) of section 127
shall be made in Form TM-M within one month from the date of such decision or within such
further period not exceeding one month thereafter as the Registrar may on request allow, and
shall be accompanied by a statement setting forth the grounds on which the review is sought.

Where the decision in question concerns any other person in addition to the applicant, such
application and statement shall be left in triplicate and the Registrar shall forthwith transmit a
copy each of the application and statement to the other person concerned. The Registrar may,
after giving the parties an opportunity of being heard, reject or grant the application, either
unconditionally or subject to any conditions or limitations, as he thinks fit.”

Therefore, the Registrar can entertain a review under the opposition order and can be asked to
review the same. Ideally, the order will come up for review, but this is subject to the specific
provision contained in Section 4 of the Trademarks Act, 1999 which empowers the Registrar to
transfer a case to another Hearing Officer. However, it has to be shown that the said Hearing
Officer is biased. Additionally, if the review is filed, the period spent in review is set-off when
filing an appeal. This was held in Colgate v. Hindustan.13

7.6 APPEAL

If the concerned applicant is unsatisfied by the decision, then he can proceed to file an appeal
before the Intellectual Property Appellate Board (IPAB). The appeal can be filed under Section
91 of the Trademarks Act, 1999-

Section 91. Appeals to Appellate Board.—

(1) Any person aggrieved by an order or decision of the Registrar under this Act, or the rules
made thereunder may prefer an appeal to the Appellate Board within three months from the date
on which the order or decision sought to be appealed against is communicated to such person
preferring the appeal.

(2) No appeal shall be admitted if it is preferred after the expiry of the period specified under
sub-section (1): Provided that an appeal may be admitted after the expiry of the period specified
therefor, if the appellant satisfies the Appellate Board that he had sufficient cause for not
preferring the appeal within the specified period.

13 Colgate v. Hindustan, AIR 1995 Del 95.

(3) An appeal to the Appellate Board shall be in the prescribed form and shall be verified in the
prescribed manner and shall be accompanied by a copy of the order or decision appealed
against and by such fees as may be prescribed

The IPAB came into existence on 15th of September, 2003. The IPAB is meant to hear the
appeals that were earlier sent to High Courts. The Act is silent on where the appeal from the
IPAB lies, hence it is presumed that the appeal from an IPAB decision goes to the High Court in
the respective jurisdictions of the IPAB. The IPAB has jurisdiction based on the office of the
Registrar which was hearing the appeal i.e. Mumbai, Delhi, Ahmedabad etc. The provisions
relating to the IPAB are enshrined in sections 83-100 of the Trademarks Act, 1999.

The powers of the IPAB are similar to a civil court under the Code of Civil Procedure, 1908.
However, the IPAB is not bound by the procedure laid down in the Code.

The powers of the IPAB are enshrined under Section 92 of the Act-

Section 92. Procedure and powers of Appellate Board.—

(2) The Appellate Board shall have, for the purpose of discharging its functions under this Act,
the same powers as are vested in a civil court under the Code of Civil Procedure, 1908 (5 of
1908) while trying a suit in respect of the following matters, namely:—

(a) receiving evidence;

(b) issuing commissions for examination of witnesses;

(c) requisitioning any public record; and

(d) any other matter which may be prescribed.

Furthermore, Section 93 states that only the IPAB can be expected to hear matters arising out of
the orders from the Registrar and no other court can exercise that authority. The IPAB also has
the power to make interim orders, however, it cannot do so in the absence of the other party.

Therefore, if an appeal is filed in regard to the opposition decision/order, the following procedure
is followed-

• The appeal has to be filed in Form-2 as prescribed under IPAB Rules, 2003 within 30
days from the date of decision of the Registrar of Trademarks.

• The application shall consist of all the documentary evidence including the Order of the
Registrar, Notice of Opposition, Affidavits, Counter Statement, Vakalatnama or Power of
Attorney etc. The fees of filing appeal to the IPAB is INR 5000. The application has to be
filed in triplicate.

Note- No new grounds or evidence can be added in the appeal except with the permission of the
Appellate Board.

7.7.INTERLOCUTORY PETITION

An interlocutory petition is an application that relates to procedural matters before the judgment
in the opposition or rectification proceedings. It can be filed to the Registrar of Trademark or the
IPAB. The law relating to interlocutory petition was laid down in Trademark Journal 149 of 16th
August, 1955, which was made in relation to the 1942 Rules. However, the same is applicable till
date. An interlocutory petition can filed for-

a. Inspection of documents
b. Attendance of witness
c. Stay of proceedings
d. Order for security of costs
e. Discovery of documents
f. Issuing of Commissions
g. Amendments of Notice of Opposition/Rectification or Counter statement
h. Any other factor the Registrar holds to be an interlocutory matter

The above-mentioned list is not exhaustive. However, it is pertinent to note that the order of an
interlocutory petition which does not affect the rights of the party are not appealable.
Additionally, a Writ petition also cannot be entertained in an order for an interlocutory petition.