Introduction

A counter affidavit is a legal document filed in response to an affidavit or opposition filed by another party, particularly in the context of trademark disputes. In the trademark registration process, when an opposition is filed against a trademark application, the applicant must file a counter affidavit to defend their application. This document presents the applicant’s response to the opposition, addressing the allegations or claims made by the opposing party. Filing a counter affidavit is a crucial step in ensuring that the applicant’s trademark is evaluated fairly and that their arguments are adequately considered by the trademark office. This article explains the rules and process for filing a counter affidavit in trademark opposition cases.

Step 1: Understanding the Purpose of a Counter Affidavit

A counter affidavit serves as a formal response to the opposition raised by a third party (the opposer) against the applicant’s trademark. In this document, the applicant can counter the opposer’s claims by providing legal arguments and supporting evidence to demonstrate that their trademark should be granted registration. The purpose of the counter affidavit is to clarify any issues raised by the opposer and convince the trademark office that there is no reason for the refusal of the trademark application.

Step 2: Timeline for Filing a Counter Affidavit

Once the opposition has been filed, the trademark office typically provides the applicant with a specified time period to file a counter affidavit. In most jurisdictions, the applicant must file the counter affidavit within 30 days from receiving the notice of opposition. In some cases, an extension of time may be granted if the applicant requests it and provides valid reasons. It is essential to adhere to the deadline for filing the counter affidavit, as failure to do so could result in the opposition being upheld and the application being abandoned.

Step 3: Contents of a Counter Affidavit

A counter affidavit should be well-structured and contain specific information that addresses the opposition’s claims. Common elements of a counter affidavit include:

1. Introduction: The counter affidavit should start with a clear introduction that identifies the parties involved, the trademark application number, and the details of the opposition.
   
2. Response to Opposition Grounds: The main body of the counter affidavit should systematically address each ground of opposition raised by the opposer. The applicant should provide legal arguments and any supporting evidence that refutes the opposer’s claims.
   
3. Supporting Evidence: The applicant should attach evidence that supports their position, such as proof of trademark usage, evidence of distinctiveness, marketing materials, or survey results that show public recognition of the trademark.
   
4. Legal Arguments: The applicant should include relevant legal arguments that demonstrate the validity of the trademark application. This may include referencing laws, precedents, or previous rulings in similar cases that support the applicant’s case.
   
5. Conclusion: The counter affidavit should conclude by requesting that the trademark application proceed to registration and that the opposition be rejected based on the arguments and evidence presented.
   

Step 4: Formatting and Filing Rules

The counter affidavit must adhere to the specific formatting and filing rules of the relevant trademark office. These rules can vary by jurisdiction but typically include the following:

• Document Format: The affidavit must be prepared in a formal and structured manner. It must be signed by the applicant or their authorized representative and must be filed in the prescribed format.
  
• Supporting Documents: The counter affidavit must include copies of all relevant supporting documents, such as evidence of trademark use, advertisements, or registration certificates. These documents should be properly indexed and referenced in the affidavit.
  
• Language: The counter affidavit must be filed in the official language of the trademark office. If required, the applicant may need to provide a certified translation of documents that are in a different language.
  
• Filing Fees: Depending on the jurisdiction, the applicant may be required to pay a filing fee when submitting the counter affidavit. The fee should be paid as per the guidelines set by the trademark office.
  

Step 5: Submission of the Counter Affidavit

Once the counter affidavit is prepared, it must be filed with the relevant trademark office. The affidavit can be submitted online or in physical form, depending on the trademark office’s procedures. The applicant must ensure that they submit the affidavit within the specified time frame to avoid the risk of the opposition being upheld.

Step 6: Response from the Opposer

After the counter affidavit is filed, the opposer may have the opportunity to file a reply affidavit if necessary. This reply affidavit allows the opposer to address the claims made by the applicant in their counter affidavit. The trademark office will then evaluate the counter affidavit, reply affidavit (if filed), and all supporting documents before making a final decision.

Step 7: Hearing (If Required)

In some cases, the trademark office may schedule a hearing to allow both parties to present their arguments in person or in writing. The hearing provides an opportunity for the applicant and the opposer to discuss their positions before the trademark office makes a decision. If a hearing is not scheduled, the decision will be based on the written submissions made by both parties.

Conclusion

The counter affidavit is an essential part of the trademark opposition process, allowing the applicant to defend their trademark application against opposition. By following the specific rules and procedures for filing the counter affidavit, the applicant ensures that their arguments are considered and that they have the best chance of securing trademark registration. It is critical to file the counter affidavit on time, present clear and convincing evidence, and adhere to all filing requirements to ensure the trademark’s protection and successful registration.

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