9 - Opposition and Observations Flashcards
When can an opposition be filed?
within two months of being published in the TM journal
What can an opposition be based on?
Section 3 and/or 5
Can anyone filed an opposition based on relative grounds?
No, only the owner of the mark or right which the opposition is based on
What should be included in an opposition based on an earlier registration of application?
- a representation of the mark relied on in the Opposition
- details of the Register, i.e. UK/IR etc.
- registration/application number
- goods/services in respect of which mark is registered
- goods/services which form the basis of the opposition
- if the opponent is relying on a mark which has been registered for more than 5 years
at the time of publication of the opposed application then the opponent must file a
“statement of use” confirming that the mark has been put to genuine use in the
preceding 5 year period in relation to each of the goods/services upon which the
opposition is based (or that there are genuine reasons for non-use)
What should be included in an opposition based on an unregistered mark?
- a representation of the mark
- goods/services on which the mark is used
- details of when and where the earlier right was used including date of first use
What is the fast track opposition available for?
Oppositions based on s5(1) or (2) only, no more than three earlier marks, and any proof of use is submitted upfront.
Costs are capped.
When does an applicant have to file a Notice of Defence (TM8) by?
Within two month of notification date, otherwise deemed abandoned.
What is the cooling off period?
Either party can file a TM9C to enter the cooling off period, which gives the parties 9 months to reach a settlement. Can be extended by a further 9 months.
The cooling off period can be terminated by the opponent at any time, which sets a one month deadline for the application to file a Notice of defence (TM8).
When might a preliminary indication be issued?
If opposition is based off s5(1) or (2) the Registrar has the power to issue a preliminary indication. Only issued if reason to believe they will being proceedings to an early conclusion.
What are the possible outcomes of a preliminary indication?
If the Preliminary Indication is that the application should not be refused, the opposition is treated as withdrawn unless, within one month of the Indication Date, the Opponent files Form TM53.
If the Preliminary Indication is that the Application should be refused, the Application is treated as withdrawn unless, within one month of the Indication Date, the Applicant files Form TM53.
What happens after TM8 (Notice of Defence) is filed?
The Tribunal will send the TM8 to the opponent and they will set a timetable for the
evidence rounds.
If the Opposition is based on an earlier mark with a reputation or on grounds other than s.5(1) or (2) or the truth in the statement of use is denied or not admitted, the Opponent must file evidence (including proof of use evidence). If the Opponent files no evidence the Opposition is deemed withdrawn to the extent that it is based on these grounds.
The Tribunal will specify the periods for each of the parties to file evidence and
submissions. This is entirely an issue of discretion and no fixed periods or sequences
for filing evidence are specified within this rule. This discretion also extends to the
sequence of filing evidence, as well as the period specified, and in certain
circumstances it might be deemed appropriate to set concurrent rather than sequential evidence rounds.
How is the process concluded?
After the filing of evidence, a Hearing is appointed if either party requests it. UKIPO
issues a decision which can be appealed to the “Appointed Person” or to the Court
(High Court or IPEC) 28 days from date of UKIPO decision. It may be possible to
extend this period if there are exceptional circumstances.
Appeal to the Appointed Person (usually a senior barrister) is relatively cheap and quick but there is no further appeal from the AP’s decision. Appeal to the Court may permit further appeal.
How quickly does the UKIPO aim to complete oppositions?
Within 12 months of the Applicants defence being filed?
Who can make observations?
Any person
How are observations made?
Observations are made by letter to UKIPO stating grounds for objection. UKIPO
informs the applicant. The applicant is given an opportunity to respond to UKIPO. After the end of the opposition period has ended, UKIPO decides whether to act on the observations or not.
Is the person who made the observations party to the proceedings?
No
Is there a fee for filing observations?
No
Observations v Opposition
Observations are cheaper than opposition. However, the person making the
observations is not a party to the proceedings i.e. cannot make further submissions.
More importantly, UKIPO does not give a view on the observations until after the end of the term for filing opposition, so if the observations were unsuccessful, it would be too late to file opposition. Invalidity must then be filed
What rights other than an earlier trade mark, can an opposition be based on in the UK and EU?
UK:
A right against passing off.
A copyright
Another ‘industrial property right’ e.g. a design right
A designation of origin
A geographic indication
EU:
A ‘sign’ (other than a trade mark) used in the course of trade of more than local
significance that confers the right to prohibit use. (e.g. a company name).
A designation of origin
A geographic indication.
Appropriation by an agent.
