SCT/16/ Page Ii WIPO E SCT/17/4 ORIGINAL English DATE

sct/16/# page ii wipo e sct/17/4 original: english date: march 23, 2007 world intellectual property organization

SCT/16/#
page ii
WIPO

E
SCT/17/4
ORIGINAL: English
DATE: March 23, 2007
WORLD INTELLECTUAL PROPERTY ORGANIZATION
GENEVA
standing committee on the law of trademarks, industrial designs and
geographical indications
Seventeenth Session
Geneva, May 7 to 11, 2007
TRADEMARK OPPOSITION PROCEDURES
Document prepared by the Secretariat
Page
I. INTRODUCTION 2
II. RELATION BETWEEN OPPOSITION
AND EXAMINATION PROCEDURES 2
(a) Extent of Examination 2
(b) Examination and Grounds for Opposition 2
(c) Interaction Between Examination and Opposition 3
III. GROUNDS FOR OPPOSITION 3
(a) Absolute Grounds 3
(b) Relative Grounds 4
IV. OPPOSITION PROCEDURE 5
(a) Publication 5
(b) Opposition Fora 6
(c) Entitlement to File an Opposition 6
(d) Opposition Period 7
(e) Arguments and Evidence 7
(f) Settlement and “Cooling-off” Period 11
(g) Extension of Time Limits 11
(h) Suspension of Proceedings 11
(i) Final Decision 12
(j) Appeal 12
(k) Fees and Costs 12
(l) Related Procedures 13
V. EXPERIENCES 13
(a) General 13
(b) Pre-registration Opposition 14
(c) Post-registration Opposition 14
VI. SUMMARY 15
I. INTRODUCTION
===============
1 At the sixteenth session of the Standing Committee on the Law of
Trademarks, Industrial Designs and Geographical Indications (SCT),
held in Geneva from
November 13 to 17, 2006, the SCT requested the Secretariat to prepare
a working document on trademark opposition procedures on the basis of
submissions by SCT Members (see document SCT/16/8, paragraph 13).
Accordingly, the Secretariat has prepared the present document, which
provides information about the relationship between examination and
opposition procedures (Section II.), grounds for opposition (Section
III.), opposition procedures (Section IV.), experiences with
pre-registration and post-registration opposition (Section V.), and a
summary (Section VI.).
2 This document is based on the Summary of Replies to the
Questionnaire on
Trademark Law and Practice (document WIPO/STrad/INF/1, hereinafter
referred to
as the “Questionnaire”) which includes the replies received from 73
Member States
and three intergovernmental organizations1. It is also based on
information submitted by the following members of the SCT, as agreed
at the sixteenth session of the Standing Committee: Australia,
Bulgaria, China, Croatia, Ecuador, Finland, France, Japan, Moldova,
Morocco, Norway, Republic of Korea, Russian Federation, Slovakia,
Slovenia, Sweden, Switzerland, The former Yugoslav Republic of
Macedonia, United Kingdom, United States
of America, the European Community and the Benelux Organization for
Intellectual
Property (BOIP) on behalf of Belgium, Luxembourg and the Netherlands.
II. RELATION BETWEEN OPPOSITION AND EXAMINATION PROCEDURES
==========================================================
(a) Extent of Examination
3 The Office may examine an incoming trademark application with regard
to compliance with
– formal requirements, absolute grounds for refusal and relative
grounds for refusal (full examination);
– formal requirements and absolute grounds for refusal (partial
examination)2.
4 In the course of the examination process, the applicant may be given
the opportunity to present additional arguments in favor of the
application, or to amend the application. This possibility may be
offered, for instance, to avert an intended refusal or rebut a refusal
that has already been issued3.
(b) Examination and Grounds for Opposition
5 The relationship between a particular type of examination system and
the related opposition procedure may be defined in different ways.
6 On the one hand, it may be possible that grounds of examination by
the Office can be taken up again in the framework of opposition
proceedings (parallel structure). An example would be a system in
which a trademark application is examined as to formal, absolute and
relative grounds for refusal by the Office. Opposition may also be
based on formal, absolute and relative grounds4. The parallel
structure may be perceived as a means to reduce the number of
oppositions. The examination by the Office as to relative grounds for
refusal, for instance, may already exclude certain trademarks which
conflict with earlier rights5.
7 On the other hand, the opposition procedure may be intended to
complement the examination process. In this case, certain issues that
are not examined by the Office can be raised within the framework of
opposition proceedings (complementary structure). For instance, the
Office may examine a trademark application as to formal and absolute
grounds for refusal. Third parties may object to the trademark
application on relative grounds in the framework of the opposition
procedure6.
8 Finally, it may be felt that a full examination of trademark
applications – as to formal requirements as well as absolute and
relative grounds for refusal – reduces the need for opposition
procedures. In such a system, the trademark registration is effected
on the basis of the examination carried out by the Office. The
examination process may be supplemented by an administrative
cancellation procedure which permits to challenge a trademark on
absolute and relative grounds after it has been registered7.
(c) Interaction Between Examination and Opposition
9 In pre-registration opposition systems, oppositions that are brought
against a trademark may influence the examination process by the
Office. The trademark application may already be published for
opposition at an early stage of the examination process – for
instance, directly after the trademark application has been filed or
after the formal examination. Further steps of the examination process
may then be undertaken after the opposition period has expired or in
parallel with the opposition procedure8. In addition, there may be a
maximum time limit within which the Office has to examine the
application as to substance irrespective of whether or not an
opposition has been filed9.
10 An interaction between examination and opposition is also possible
in case the opposition procedure begins after the Office has completed
the examination process10. If, in the course of the subsequent
opposition procedure, facts are disclosed which appear to render the
trademark unregistrable, there may be a possibility for the opposition
body to send the application back to the examiner for reexamination
either ex officio or upon request of a party to the opposition
procedure11.
III. GROUNDS FOR OPPOSITION
(a) Absolute Grounds
11 In trademark registration systems in which opposition can be based
on absolute grounds for refusal, an opponent may be able to assert
that the trademark concerned
– is not capable of distinguishing goods or services;
– is devoid of distinctive character;
– is descriptive or misdescriptive;
– has become generic (in current language or in the established trade
practices);
– is contrary to morality or public order;
– may disrepute, disparage or falsely suggest a connection with
persons, living or
dead, institutions, beliefs or national symbols;
– is of such a nature as to deceive the public, for instance, with
regard to the nature,
quality or geographical origin of goods or services;
– conflicts with official signs or emblems protected under Article 6ter
of the Paris
Convention or according to national laws;
– conflicts with signs that have a high symbolic value, such as a
religious symbol;
– conflicts with provisions prohibiting the re-registration of
canceled trademarks;
– is functional;
– consists of or comprises a name, portrait or signature identifying a
particular
individual;
– is not intended for use by the applicant;
– has been registered in bad faith;
– has been obtained by fraud;
– has been abandoned;
– conflicts with provisions of international law, such as provisions
of the Paris Convention for the Protection of Industrial Property12.
(b) Relative Grounds
12 In trademark systems in which opposition can be based on relative
grounds for refusal, an opponent may be able to assert that the
trademark concerned conflicts with
– a prior trademark;
– a prior trademark application;
– a well-known mark (including dilution of the mark’s distinctive
character or
repute);
– a registered defensive trademark;
– a trade name;
– a person’s real or assumed name, likeness or portrait;
– the name of a famous person;
– the name of a plant variety;
– a protected geographical indication or appellation of origin;
– an industrial design;
– the title of a protected literary or artistic work;
– the copyright in a literary or artistic work13.
IV. OPPOSITION PROCEDURE
(a) Publication
13 The publication of a trademark application or registration
constitutes the starting point of the opposition procedure14. In
opposition systems in which the examination and the opposition
procedure are carried out in parallel, the Office may be obliged to
publish the trademark application within a certain time limit running
from the filing of the trademark application15.
14 In systems where the opposition procedure follows the examination
process, the publication takes place after the trademark application
has been examined and accepted by the Office16. The applicable
national law may provide for publication within a specific time limit,
such as a time limit of one month running from the end of the formal
examination of the application. The time limit may be supplemented by
a maximum time limit for publication, such as a time limit of four
months running from the filing date17.
15 In addition to a publication in paper form, the Office may provide
for publication on its website18. In case of an international
trademark registration, the publication in the WIPO Gazette of
International Marks may be decisive19.
16 The publication may contain
– the number of the trademark;
– the filing or priority date;
– data identifying the applicant;
– an indication of the kind of mark;
– a representation of the mark;
– a claim of a color or several colors;
– an indication of the classes of goods and services concerned;
– a list of these goods and services;
– dates of use relating to the trademark concerned20.
(b) Opposition Fora
17 Opposition proceedings may be held before the Office or another
forum, such as a judicial or administrative appeal authority21. The
opposition body may consist of examination officers or be a specific
opposition board composed of trademark judges, attorneys, paralegals
and administrative clerks. A further example would be a collegial body
of either three or five trial appeal examiners22. It is also
conceivable that different Office departments be involved in the
opposition procedure23. The role of the Office may change from
administrative to that of a tribunal, acting in a quasi-judicial
capacity24.
(c) Entitlement to File an Opposition
18 The circle of persons that can bring an opposition need not
necessarily be limited. In certain trademark registration systems, any
person can file an opposition25.
19 The entitlement to file an opposition may also require that the
opposing party have a legitimate interest26. Standing in opposition
procedures, for instance, may be limited to persons who believe that
they would be damaged by the registration of the trademark concerned.
In this case, a proof of standing may depend on the grounds asserted
in the opposition. An opponent asserting that a trademark is
descriptive, for instance, may be required to show that he or she is a
competitor of the applicant and that the terms used by the applicant
are needed by other competitors to describe the products concerned27.
20 The applicable law may also define the circle of persons who are
entitled to bring an opposition. The circle may include:
– owners of trademarks that have been registered or protected earlier;
– trademark applicants that have filed an earlier application or
benefit from an
earlier priority date;
– owners of trademarks that have become well-known prior to the filing
of the
trademark application;
– holders of an exclusive trademark license;
– owners of protected geographical indications or appellations of
origin, and holders
of exclusive licenses;
– holders of rights in a name or personal portrayal;
– owners of other earlier industrial property rights, such as rights
in trade names or
plant varieties;
– owners of copyright in a work which is identical with or similar to
the trademark
for which registration is sought28.
21 A pre-registration opposition system limiting the circle of
entitled persons may be supplemented by post-registration cancellation
procedures that can be based on additional absolute or relative
grounds for cancellation29.
22 National law may stipulate that the person filing an opposition
does not become a party to the application proceedings. Nevertheless,
the person may be entitled to receive, on request, information
concerning the outcome of the objections raised30.
(d) Opposition Period
23 An opposition period of two or three months, running from the date
of publication, can be found in several trademark registration systems31.
24 The opposition period may consist of several parts, such as an
initial opposition period and extensions. The initial period, for
instance, may be 30 days counted from the day of publication. The
grant of extensions may depend on a showing of “good cause”, such as a
statement that the potential opponent is investigating whether or not
to file an opposition. It may also depend on whether the opponent has
a legitimate interest in lodging the opposition. Consent of the
applicant or a showing of extraordinary circumstances may constitute
further criteria. Through requests for extension, the initial period
may be prolonged for a period between one and six months32.
25 The opposition may also be submitted in stages. The opponent may be
required to send a notice of opposition that contains a brief
statement indicating the grounds for opposition, within an initial,
not extendable period of two months. In a second step, the opponent
can amend or supplement the grounds for opposition, or add further
grounds, within a second period of 30 days running from the expiration
of the initial period33.
(e) Arguments and Evidence
(i) Notice of opposition
26 The applicable law may require that, to commence the opposition
procedure, a notice of opposition be submitted in writing or via fax,
or filed electronically. The notice of opposition may contain
– information identifying the opponent;
– allegations as to the opponent’s entitlement to file an opposition;
– a representation of the opposed trademark;
– the number of the opposed trademark application;
– the issue number of the official publication in which the opposed
trademark has been published;
– a representation of the earlier mark on which the opposition is
based;
– an indication of the registry in which the earlier mark is
registered (in case the mark has been registered internationally or
under a regional trademark system);
– the registration number of the earlier mark;
– the classes in respect of which the earlier mark is registered;
– the goods and services for which the earlier mark is registered;
– information on changes in ownership concerning the earlier mark;
– information on limitations of the registration of the earlier mark,
for instance, with regard to goods or services;
– a statement of use or details concerning reasons for non-use of the
earlier mark (which may require to specify relevant goods and
services);
– a statement of grounds and arguments containing, for instance, a
comparison of goods and services and a comparison of the signs
concerned34.
27 The payment of a fee may be necessary35. In certain trademark
systems, the opposing party may be required to enclose, with the
notice of opposition, evidence of the asserted grounds for opposition36.
In other systems, evidence need not be offered at this initial stage
of the opposition procedure37.
28 Once the notice of opposition has been filed, changes to the
opposition may be limited to amendments of the grounds indicated in
the notice of opposition and the means of proof38. It may be necessary
to limit the notice of opposition to one ground for opposition. In
case the opponent wishes to object to a trademark application on the
basis of several prior trademarks, he or she may be obliged to file an
individual notice of opposition for each earlier trademark39.
(ii) Examination by the Office
29 On receipt of the notice of opposition, the Office may examine the
opposition as to formal requirements, such as
– the observation of the prescribed time limit;
– the entitlement of the opposing party to file an opposition;
– requirements relating to a power of attorney;
– the payment of opposition fees40.
30 The opposition body may also scrutinize the statement of grounds
and require the opposing party to further explain its pleadings. If,
without prejudging matters of substance, a particular ground of
opposition is plainly unsustainable in the view of the opposition
body, it may be in a position to object to this ground. The Office may
also signal that it would expect evidence later filed to support a
particular claim41. Where two or more oppositions against a trademark
are filed, the examination of the oppositions may be combined42.
31 In certain systems, an opposition may generally allow the Office to
reassess the decision taken on a trademark application, irrespective
of the grounds asserted by the opponent. This possibility may be
limited to the goods and services affected by the opposition. If there
are special reasons, the Office may have the authority to complete the
opposition procedure even if it has been withdrawn by the opponent43.
(iii) Notification to the applicant or holder
32 The opposition will be communicated to the applicant who may answer
to the notification within a certain time limit, such as a period
between one and three months44. The applicable law may specify that
the opposition shall be notified to the applicant without delay45.
33 The applicant’s answer may contain affirmative defenses, such as
acquiescence, fraud or prior registration. It may include
counterclaims or a counter-statement admitting, denying with
explanation or requiring proof of any of the grounds set out by the
opponent46. The applicant may also be offered the opportunity to
request a cooling-off period (see section (f), below)47. If the
applicant does not react to the notification of opposition, he or she
may be deemed to have withdrawn the trademark application. The Office
will notify all answers and observations it receives from the
applicant to the other party48.
34 In certain post-registration opposition systems, a reply to the
notification of an opposition is required only upon receipt of a
further notification from the Office containing reasons for the
revocation of the trademark registration. With regard to this
additional notification, the parties to the opposition procedure will
be given the opportunity to submit a statement of their arguments
within an adequate period of time49.
(iv) Consideration by the Office
35 The opposition body may take a decision on the trademark
application or registration on the basis of the information submitted
by the opponent and the answer given by the trademark applicant or
holder50. If the applicant does not react to the opposition, the
Office may base its decision on an assessment of the arguments and
evidence presented by the opposing party51. The applicable law may
also allow the Office to suspend the application procedure with regard
to the objections raised in the opposition without verifying the
allegations of the opponent52.
36 The opposition body may judge the issues raised by the parties and
issue a draft decision or preliminary indication. In case the parties
accept the proposal by the opposition body, it will be regarded as the
final decision and the proceedings will be closed. If either party
does not wish to accept the proposal, the continuation of the
proceedings may be requested. There may be a time limit, such as a
time limit of 15 days or one month, within which the parties must give
notice of their intention to proceed. The notice may require a written
request or a request for oral hearings. If no such notice is received
within the prescribed time limit, the parties’ agreement with the
preliminary indication may be presumed53.
(v) Filing of evidence
37 In opposition systems where evidence need not be enclosed with the
initial notice of opposition or the applicant’s response, the parties
may be required to file evidence in support of their case within a
certain time limit, such as a time limit of three months. It may also
be possible to supplement evidence that has been filed earlier54. If
the opponent does not file evidence, the opposition may be deemed to
be withdrawn55.
38 The disclosure of information may improve the chances of settlement
negotiations and an early resolution of the case. There may also be a
possibility of the parties requesting and receiving relevant
information from each other to evaluate their claims and defenses. For
this purpose, the parties may be permitted to submit questions to the
other party that must be answered within a certain time limit. A
further possibility would be a request for documents or deposition
before a court reporter56.
39 It may also be stipulated that, after the initial notification of
the opposition to the applicant, the exchange of briefs between the
parties shall continue until the case is adequately examined. In this
case, evidence may be limited to written material, objects or sound
recordings. The Office would act primarily as an intermediary
transmitting material from one party to the other57.
40 There may also be a specific system of evidential rounds. In reply
to the filing of evidence by one party, the other party, in turn, may
be allowed to file evidence which, however, must be confined strictly
to matters in reply. A party filing evidence may be obliged to send a
copy of the submission to the other party. The number of evidential
rounds may be limited. Following the final round of evidence, the
parties may have a choice as to how the final decision should be
reached by the opposition body. Besides a decision based on all the
evidence and submissions, it may be possible to request an oral
hearing58.
41 In opposition systems that are similar to court proceedings, the
initial exchange of information may be followed by a testimony period
allowing for oral examination, written questions, testimony of
witnesses and the introduction of written evidence, such as official
records or printed publications. In case of insufficient cooperation
of one of the parties with regard to the exchange of information and
testimony, the opposition system may provide that motions can be filed
with the opposition body in order to obtain the necessary information
or testimony59.
(vi) Oral hearings
42 In certain opposition systems, the opposition body may hold oral
hearings to ask questions about facts and arguments presented by the
parties. According to the applicable law, oral hearings may be held
only if requested by one of the parties. For this purpose, a specific
commission may be established at the Office. The hearings may be
conducted with the parties in person, via telephone or through a video
conference. After the final hearing, the opposition system may allow
for requests for rehearing, reconsideration, or modification of a
decision taken by the opposition body on the basis of the evidence
provided by the parties and the outcome of the hearings60.
(f) Settlement and “Cooling-off” Period
43 The opposition system may offer room for settlement talks61. An
example would be a system in which the opponent, instead of directly
filing the opposition, may first request several extensions of the
opposition period. During the additional time periods resulting from
extensions, the parties can determine whether their dispute can be
resolved before officially submitting an opposition62. After the
opposition is filed, it may be possible for the parties to request the
suspension of the opposition procedure in order to enter into
settlement discussions (see section (h), below).
44 The applicable law may also provide for a so-called “cooling-off”
period. In this case, the parties to the opposition are given a
certain period, ranging from two to twelve months, to exchange
arguments or ask for proof of facts, such as proof for the use of a
trademark. The cooling-off period may start after the opposition has
been notified to the applicant. For instance, there may be a
possibility of either party making a request for an extension of the
period within which the applicant has to submit the counter-statement.
Both parties may be required to agree on the cooling-off period. At
the joint request of both parties, it may be extended. In case no
settlement can be reached, the cooling-off period may be terminated
early. Failure to resolve matters during the cooling-off period need
not necessarily exclude later settlement negotiations in the course of
the opposition proceedings63.
(g) Extension of Time Limits
45 While the initial opposition period may not be extendable64, an
extension of time limits may be available during the opposition
proceedings for several procedural acts, such as
– amendments to the notice of opposition in the case of foreign
opponents;
– the submission of a reply to the other party;
– the filing or service of evidence65.
46 It may be possible to file a request for the extension of a time
limit even after the time limit has expired. The request, however, may
require the indication of satisfactory reasons for the delay66.
(h) Suspension of Proceedings
47 Opposition proceedings may be suspended in the following cases:
– opposition based on a pending prior trademark application;
– pending court decision that may have a bearing on the decision of
the opposition
body, such as a court decision concerning the annulment or
invalidation of a trademark;
– joint request of the parties for suspension (for instance, to allow
settlement
negotiations);
– during the process of examining the application as to absolute
grounds for
refusal67.
48 The suspension of opposition proceedings because of a pending court
decision may require that the parties to the opposition procedure be
involved in the court proceedings68. In certain systems, the
examination of the opposition, in principle, may take precedence. In
this case, the suspension of the opposition procedure may require that
the court proceedings start prior to the examination and be concluded
quickly69.
(i) Final Decision
49 Based on all available evidence, a board including administrative
trademark judges or consisting of opposition examining officers may
take a final decision. The decision may be published in the official
gazette of the Office and/or on the web site of the Office.
50 The time needed by the Office for issuing the final decision may
vary depending on the resources and current case load of the Office70.
However, once the case is adequately examined, the parties may be
notified that the final decision can be expected within a certain
period of time71.
51 In case the opposition procedure has to be concluded in a specific
time limit, such as a time limit of six months, extensions may be
possible on request of one of the parties, on joint request of both
parties or on the initiative of the opposition board. A request
submitted by only one of the parties or an Office decision may require
the indication of reasons for the extension72.
(j) Appeal
52 Against the final decision of the opposition body, an appeal to a
specific board of appeals at the Office, a specific government
commission, an appointed person acting as an appellate tribunal, the
courts in general or to a specific trade or patent court may be
possible within a specific time limit, such as a time limit of one or
two months. In case of foreign applicants, a longer time limit may be
offered. Against the appeal decision of an appeal board, a further
appeal to the courts may be possible. An appeal to an appointed person
may exclude further rights of appeal. Against the appeal decision of a
court, an appeal to a higher court may be possible73.
53 In respect of appeal to the courts, the parties to the opposition
procedure may have different options, such as a request for new trial
to a district court, or an appeal to an appeal court based on the
closed record of the opposition procedure. In the latter case, the
appeal court will not accept the introduction of new evidence74.
(k) Fees and Costs
54 In case the filing of an opposition requires the payment of a fee,
the losing party to the opposition may be obliged to pay the
opposition fee75. The amount may depend on the number of classes of
goods and services which the opposition concerns76.
55 Opposition procedures may imply further costs for the parties, such
as the cost of legal advice, for compilation of evidence, for research
and investigation, for letters and for representation at hearings77.
Each party to the opposition procedure may be obliged to bear
its own cost of the proceedings78. In this case, the opposition body
is exempted from the potentially complex task of awarding costs.
Unlike the courts, the Office may not have the power of awarding costs
to the winning party79.
56 It is also conceivable that costs will be awarded at the
termination of opposition proceedings. The award may be made from a
scale of costs which is regarded as contributory rather than
compensatory in order not to deter anyone from seeking protection for
intellectual property rights. Accordingly, the losing party will be
unlikely to reimburse the total cost of the proceedings to the other
parties80.
(l) Related Procedures
57 In certain countries, the opposition procedure is supplemented with
a related procedure that also offers the opportunity to raise
objections against the registration of a trademark.
58 An example would be a system in which anyone, prior to the
registration of the trademark concerned, can submit written
observations at any stage of the registration procedure. An objection
that is raised in this framework will not be treated as a formal
opposition. The person submitting observations does not become a party
to the proceedings before the Office. Instead, the Office will take
observations into account when deciding on the registration of the
trademark. The applicant may be given the opportunity to file a
counter-statement. Both the applicant and the person who made
observations may be informed about the results of the submission81.
59 A pre-registration opposition system may also be accompanied by
invalidation proceedings that, after the registration of a trademark,
can be initiated either before the Office or before the courts. If the
trademark is declared invalid in the course of the invalidation
procedure, the registration may be deemed never to have been made. The
different stages of invalidation procedures held before the Office may
be similar to the steps taken in the course of pre-registration
opposition proceedings82.
60 In systems which do not provide for opposition procedures, an
administrative cancellation procedure before a specific body, such as
a chamber of disputes, may offer the possibility to challenge a
trademark after it has been registered on the basis of the examination
undertaken by the Office83.
61 A combination of different procedures may result from the fact that
the opposition body only has limited jurisdiction related to the
registrability of a trademark. In certain cases, such as the issuing
of injunctions against the use of a trademark, a combination with
court proceedings may be possible under national law84.
V. EXPERIENCES
(a) General
62 Opposition procedures may be considered a relatively fast and
cost-efficient way of preventing the registration of signs that do not
comply with the applicable law. They may require less time than court
proceedings. They may be regarded as a means to avoid the potentially
high costs associated with court action. Further cost savings may be
realized in opposition systems that do not require the parties to be
represented by an attorney or other representative85.
63 As to the work of trademark Offices, opposition procedures may
imply certain organizational difficulties with regard to staff and the
reduction of a potential backlog86.
(b) Pre-registration Opposition
64 The establishment of a pre-registration opposition system may
underlie the consideration that it is better to prevent the
acquisition of trademark rights rather than to bestow rights only
later to extinguish them. The core benefit of the system can be seen
in the fact that it allows a determination as to whether an applicant
has the right to register a given sign, as against any third party,
prior to the acquisition of rights resulting from registration87.
65 Pre-registration opposition may be intended to avoid the
uncertainty of untested registrations on the register. It may be
regarded as a means to protect the rights of third parties and respond
to the applicant’s interest in legal certainty88.
66 On the other hand, the opposition procedure may prolong the
registration process substantially. For a pre-registration system to
fulfil its functions, business circles must be aware of the necessity
to follow the publication of trademark applications89.
(c) Post-registration Opposition
67 It may be felt that trademark applications can be dealt with faster
in post-registration opposition systems. After the examination of an
application by the Office, the trademark registration can directly be
effected, published in the official gazette and notified to the
applicant. Applicants can quickly obtain a right without being obliged
to wait for the expiry of the opposition period90.
68 As to Office procedures, a post-registration system may be seen as
a means to simplify the registration procedure and render it more
efficient. Advantages may be derived from the fact that the Office
need not take any further measures after registration if no opposition
is lodged. The post‑registration system requires only one publication
of the trademark whereas, under a pre‑registration system, both the
trademark application and the final trademark registration are
published – regardless of whether an opposition is raised91.
69 In case of successful opposition, the trademark registration will
be revoked. A public notice of the revocation may be given92. The
registration fee will not necessarily be returned to the applicant93.
70 It may be regarded as a disadvantage of post-registration
opposition systems that the Office cannot use the opposition period to
review its own examination of the trademark application94.
VI. SUMMARY
71 The information on trademark opposition procedures presented in
this document and compiled on the basis of submissions transmitted by
members of the SCT, can be summarized as follows:
72 As to the relationship between opposition and examination
procedures, certain national systems allow an opposition to be based
on all issues that are also examined by the Office (parallel
structure). In other systems, opposition procedures are limited to
issues that are not part of the examination by the Office
(complementary structure) (see Section II.).
73 The grounds for opposition depend on the relationship between
opposition and examination procedures. In a national system
establishing a parallel structure, it may be possible to assert
formal, absolute and relative grounds for opposition. In a national
system establishing a complementary structure, the grounds for
opposition may be limited to relative grounds. The specific grounds to
be found in a given national or regional system reflect different
legal traditions and approaches to trademark registration (see Section
III.).
74 As to the opposition procedure, the following observations can be
made:
*
in addition to the publication of a trademark application or a
trademark
registration in paper form, the application may be published in
electronic form;
*
the opposition may be examined by an examination officer, a
collegial
body of examiners or a board including a trademark judge;
*
the opposition system may permit any person to lodge an
opposition, limit the
entitlement to file an opposition to persons having a legitimate
interest, or specifically define the circle of persons entitled to
bring an opposition;
*
the opposition period may consist of one single, non-extendable
term, or of an
initial term and several extensions;
*
the different procedural steps may be as follows:
– notice of opposition submitted by the opponent;
– formal examination of the notice of opposition by the Office;
– notification of the opposition to the applicant or holder;
– exchange of further evidence;
– final decision by the Office;
*
settlement negotiations may take place between the parties during
the time the
initial opposition period is extended, while the opposition
proceedings are suspended on joint request of both parties, or during
a so-called “cooling-off” period starting after the opposition has
been notified to the applicant or holder;
*
an extension of time limits may particularly be available in the
period during
which the parties exchange arguments and evidence;
*
against the final decision of the opposition body, an appeal to a
specific board of
appeals at the Office, a specific government commission, an appointed
appellate tribunal, the courts in general, or a specific trade or
patent court may be possible (see Section IV.).
75 A pre-registration opposition system may be established to avoid
the uncertainty of untested registrations on the register. It may
substantially prolong the registration procedure. A post-registration
opposition system may be established to allow applicants to obtain
trademark rights quickly without being obliged to wait for the expiry
of the opposition period. If no opposition is lodged, the Office need
not take any further steps (see Section V.).
[End of document]
1 In the submissions by the Delegations of Sweden (p. 1) and
Switzerland (p. 5), reference is made to the replies to the
Questionnaire on Trademark Law and Practice.
2 See Questionnaire, ibid., replies to IV.1.A. (pp. 51-52).
3 See submissions by the Delegations of the Republic of Korea (pp.
1-2) and the United States of America (p. 4).
4 See submissions by the Delegations of Finland (p. 3), the United
Kingdom (pp. 1-2) and the United States of America (p. 6).
5 See submissions by the Delegations of Australia (p. 4) and the
United States of America (p. 13).
6 See submissions by the Delegations of Croatia (p. 3) and Slovakia
(pp. 1-2), and the Representative of the European Community (p. 2).
7 See submission by the Delegation of the Russian Federation (p. 1).
Cf. Questionnaire, ibid., replies to X.1.C. and F. (pp. 164-169) and
X.2.A. to I. (pp. 173-179).
8 See Questionnaire, ibid., replies to V.1.A. (iv)(a), (b) and (c)
(pp. 85-86).
9 See submissions by the Delegations of Bulgaria (p. 2), Ecuador (pp.
8-9) and France (p. 1).
10 See Questionnaire, ibid., replies to V.1.A. (iv)(d) and (e) (pp.
87-88).
11 See submission by the Delegation of the United States of America
(p. 10).
12 See submissions by the Delegations of Australia (p. 1), Finland (p.
3), Japan (p. 1),
Slovakia (p. 1), the United Kingdom (pp. 14-16) and the United States
of
America (pp. 3-4 and 6). Cf. Questionnaire, ibid., replies to V.5.A.
to K. (pp. 99-108) and document SCT/16/4, paragraphs 10-18.
13 See submissions by the Delegations of Australia (p. 1), Croatia (p.
3), Finland (pp. 3-4),
France (p. 2), Japan (pp. 1-2), Slovakia (p. 2) and Slovenia (p. 2-3).
Cf. Questionnaire, ibid., replies to V.5.L. to Z. (pp. 107-116) and
document SCT/16/4, paragraphs 19-24.
14 See Questionnaire, ibid., replies to V.3.D. (pp. 95-96).
15 See submission by the Delegation of France (p. 2).
16 See submission by the Delegation of the United Kingdom (p. 1).
17 See submission by the Delegation of Bulgaria (p. 2).
18 See submissions by the Delegations of the Republic of Korea (pp.
1-2) and Norway (p. 2). Cf. Questionnaire, ibid., replies to V.3.A.
and C. (pp. 91-94).
19 See submission by the Delegation of France (p. 2).
20 See submissions by the Delegations of Bulgaria (p.2) and the United
States of
America (pp. 1-2).
21 See Questionnaire, ibid., replies to V.1.A. (i), (ii) and (iii)
(pp. 83-84).
22 See submissions by the Delegations of Japan (p. 2), Moldova (p. 2),
Norway (p. 1) and the United States of America (p. 10).
23 See submission by the Delegation of Moldova (p. 2).
24 See submission by the Delegation of the United Kingdom (p. 2).
25 See submissions by the Delegations of Australia (p. 1), Bulgaria
(p. 2), China (pp. 4-5),
Japan (p. 1), Norway (p. 1), Moldova (p. 2), Sweden (p. 1) and the
United Kingdom (pp. 1-2). Cf. Questionnaire, ibid., replies to
V.4.A.(i) (pp. 97-98).
26 See submission by the Delegation of Ecuador (pp. 8-9). Cf.
Questionnaire, ibid., replies to V.4.A.(ii) (pp. 97-98) and document
SCT/16/4, paragraph 29.
27 See submission by the Delegation of the United States of America
(p. 6).
28 See submissions by the Delegations of France (p. 3), Morocco (p.
2), Slovenia (pp. 1-2) and The former Yugoslav Republic of Macedonia
(pp. 1-2), and the Representatives of the Benelux Organization for
Intellectual Property (BOIP) (pp. 3-4) and the European Community (p.
2).
29 See submission by the Representative of the European Community (p.
2).
30 See submission by the Delegation of Bulgaria (p. 2).
31 See Questionnaire, ibid., replies to V.2.A. (pp. 89-90) and V.3.D.
(pp. 95-96).
Cf. document SCT/16/4, paragraphs 30-31.
32 See submissions by the Delegations of Ecuador (pp. 8-9) and the
United States of
America (p. 5).
33 See submissions by the Delegations of Japan (p. 1) and the Republic
of Korea (pp. 1-2).
34 See submissions by the Delegations of Bulgaria (p. 2), China (pp.
4-5), France (p. 3), the Republic of Korea (pp. 1-2), Sweden (p. 1),
the United Kingdom (pp. 2-3) and the United States of America (p. 7).
35 See submissions by the Delegations of Australia (p. 1), Ecuador
(pp. 8-9), France (p. 3) and the United Kingdom (p. 3).
36 See submissions by the Delegations of Australia (pp. 1-2), China
(pp. 4-5), Slovenia (pp. 1-2) and The former Yugoslav Republic of
Macedonia (p. 2).
37 See submissions by the Delegations of Norway (p. 2), the Republic
of Korea (pp. 1-2), the United Kingdom (pp. 3 and 7), the United
States of America (pp. 7-8 and 12).
38 See submission by the Delegation of Japan (p. 1).
39 See submission by the Delegation of France (p. 3).
40 See submissions by the Delegations of Slovenia (pp. 1-2) and The
former Yugoslav Republic of Macedonia (p. 2).
41 See submission by the Delegation of the United Kingdom (p. 3).
42 See submission by the Delegation of Japan (p. 2).
43 See submissions by the Delegations of Japan (p. 2) and Sweden (p.
1).
44 See submissions by the Delegations of China (pp. 4-5), Ecuador (pp.
8-9), Norway (p. 2), Slovenia (pp. 1-2), The former Yugoslav Republic
of Macedonia (p. 2) and the United States of America (p. 7).
45 See submissions by the Delegations of France (p. 4) and Morocco (p.
2).
46 See submissions by the Delegations of the United Kingdom (pp. 3-4)
and the United States of America (p. 7).
47 See submission by the Delegation of the United Kingdom (p. 4).
48 See submissions by the Delegations of Morocco (p. 2) and the United
Kingdom (p. 3).
49 See submission by the Delegation of Japan (p. 2).
50 See submissions by the Delegations of Ecuador (pp. 8-9), Slovakia
(p. 3), Slovenia (pp. 1-2), Sweden (p. 1) and The former Yugoslav
Republic of Macedonia (p. 2).
51 See submissions by the Delegations of China (pp. 4-5) and The
former Yugoslav Republic of Macedonia (p. 2).
52 See submission by the Delegation of Slovakia (p. 3).
53 See submissions by the Delegations of France (p. 4), Morocco (p. 3)
and the United
Kingdom (p. 5).
54 See submission by the Delegation of China (pp. 4-5).
55 See submission by the Delegation of the United Kingdom (p. 7).
56 See submission by the Delegation of the United States of America
(pp. 8-9).
57 See submission by the Delegation of Norway (p. 2).
58 See submissions by the Delegations of Australia (p. 3) and the
United Kingdom (pp. 7-8).
59 See submission by the Delegation of the United States of America
(pp. 11-12).
60 See submissions by the Delegations of Australia (p. 3), China (pp.
4-5), France (p. 4),
Japan (p. 2), the United Kingdom (p. 8) and the United States of
America (p. 10).
61 See Questionnaire, ibid., replies to V.6.B. (pp. 117-118).
62 See submission by the Delegation of the United States of America
(p. 5).
63 See submissions by the Delegation of the United Kingdom (p. 4) and
the Representative of the Benelux Organization for Intellectual
Property (BOIP) (pp. 3-4).
64 See submissions by the Delegations of Croatia (p. 3), France (p. 2)
and the United
Kingdom (p. 8), and the Representative of the European Community (p.
2).
65 See submissions by the Delegations of Australia (p. 3), Ecuador
(pp. 8-9), Japan (p. 1),
Norway (p. 2), Slovenia (pp. 1-2), and the United States of America
(pp. 11-12).
66 See submission by the Delegation of the United Kingdom (p. 8).
67 See submissions by the Delegations of Australia (p. 3), France (p.
4), Morocco (p. 2) and the United States of America (pp. 11-13), and
the Representative of the Benelux Organization for Intellectual
Property (BOIP) (pp. 3-4).
68 See submission by the Delegation of the United States of America
(p. 12).
69 See submission by the Delegation of Japan (p. 4).
70 See Questionnaire, ibid., replies to V.6.E. (pp. 120-121).
71 See submission by the Delegation of Norway (p. 3).
72 See submissions by the Delegation of Morocco (p. 3).
73 See submissions by the Delegations of Croatia (p. 3), France (p.
2), Japan (pp. 3-4),
Norway (p. 3), Slovenia (pp. 1-2), Sweden (p. 1), The former Yugoslav
Republic of
Macedonia (p. 2), the United Kingdom (p. 14) and the United States of
America (p. 10),
and the Representative of the Benelux Organization for Intellectual
Property (BOIP) (pp. 3-4). Cf. Questionnaire, ibid., replies to
VI.1.A. (pp. 122-123) and VI.3. (pp. 128-130).
74 See submission by the Delegation of the United States of America
(p. 10).
75 See submission by the Representative of the Benelux Organization
for Intellectual
Property (BOIP) (pp. 3-4).
76 See submission by the Delegation of the United States of America
(p. 5).
77 See submission by the Delegation of the United Kingdom (p. 14).
78 See Questionnaire, ibid., replies to V.6.C. (pp. 117-118).
79 See submissions by the Delegations of Norway (p. 3) and the United
States of America (p. 11).
80 See submission by the Delegation of the United Kingdom (p. 14).
81 See submissions by the Delegations of Norway (p. 1) and Slovakia
(p. 3).
82 See submission by the Delegation of the United Kingdom (pp. 9-12).
83 See submission by the Delegation of the Russian Federation (p. 1).
84 See submission by the Delegation of the United States of America
(p. 6).
85 See submissions by the Delegations of Australia (p. 4), France (p.
1), Slovenia (pp. 1-2) and The former Yugoslav Republic of Macedonia
(p. 2).
86 See submission by the Delegation of Slovenia (pp. 1-2).
87 See submission by the Delegation of the United States of America
(p. 1).
88 See submissions by the Delegations of Australia (pp. 4-5), China
(pp. 4-5), Slovakia (p. 3), Slovenia (pp. 1-2) and the United States
of America (p. 1).
89 See submissions by the Delegations of Slovenia (pp. 1-2) and The
former Yugoslav Republic of Macedonia (p. 2).
90 See submissions by the Delegations of Finland (p. 3) and Japan (p.
5).
91 See submissions by the Delegations of Finland (p. 3), Japan (p. 5)
and Sweden (p. 1).
92 See submission by the Delegation of Finland (p. 3).
93 See submission by the Delegation of Japan (p. 8).
94 See submission by the Delegation of Japan (p. 5).