Safeguarding your brand identity is an essential aspect of your business, and it starts with Trademark Registration. But trademark disputes may arise, and two of the more common legal processes are Trademark Opposition and rectification, which serve quite distinct purposes.

Opposition vs Rectification

Having the proper Trademark Registration plan requires understanding the difference between these two processes. The Primary difference is the timing.

Trademark Opposition is a challenge to the registration of a trade mark before the registration. It enables any person to raise an objection against a trademark even before it is officially registered. By way of contrast, rectification is a post-registration action. Rectification is the legal process to amend, correct, or remove a mark once it has been entered on the Trademark Register.

Trademark Opposition seeks to prevent a mark from ever obtaining Trademark Registration, while a rectification seeks to remedy or rectify marks that may have been improperly registered, or marks that are no longer used. Securing your first Trademark Registration is the first step, while maintaining and defending your Registration is an ongoing process.

Opposition Stage (Before Registration)

Opposition is an essential stage in the Trademark Registration process. After the trademark application is reviewed and approved by the Registrar, they are published in the official Trademark Journal.

This publication opens a four-month period during which any person — competitors, businesses, or the public— can issue a notice of Trademark Opposition.

Opposition can arise due to the following grounds:

The mark is identical or deceptively similar to an existing trademark and is likely to cause confusion.
The mark is not distinctive and is descriptive of the goods or services.
The application was filed in bad faith.
The mark is likely to deceive the public and or hurt religious sentiments.

If a notice of opposition is made, the Trademark Registration process is interrupted. The applicant must respond with a counter-statement to defend their application, after which the parties will submit the evidence and participate in a hearing. If the opposition is successful, the mark will not be registered.

Rectification Stage (After Registration)

Once Trademark registration has been completed, stage of rectification comes into play. This legal proceeding can be done by an "aggrieved" person, which means someone who has a substantial legal or commercial interest that is impacted by the mark that is registered. Even the trademark owner can initiate rectification if there is an error that needs addressing.

Unlike the Trademark Opposition, rectification is not just about similarity. The main grounds are:

Non-Use: The trademark has not been used for a continuous period of 5 years from the registration date.
Wrongful Registration: Trademark Registration was secured by fraud, misrepresentation, or bad faith.
Error or Omission: The register contains an error like a wrong address, wrong classification, or mistakes in the ownership details.
Contravention of Law: The mark was registered in breach of a statutory provision.

A rectification application can be submitted to the Trademark Registrar or High Court. If the application is successful, the Registrar can amend the details or entirely cancel or completely remove the mark from the trademark register.

Lawfinity’s Dual Legal Support

Seeking legal advice to address the complexities surrounding trademark disputes is vital. At Lawfinity, we recognize that protecting your brand involves more than just your initial Trademark Registration.

We offer comprehensive, dual-focused support. Our team helps clients proactively monitor the Trademark Journal to file a timely Trademark Opposition against conflicting marks. At the same time, we assist clients with the challenges that arise after Trademark Registration is completed; whether you want to file rectification against a wrongfully registered mark, or defend your own Trademark Registration from a Cancellation petition. Lawfinity will help you to protect your intellectual property at all times.