September 22, 2008
Opposition and Cancellation Standards & Procedures Subcommittee of the Enforcement Committee
WHEREAS, it is acknowledged that the registration of a trademark confers certain rights to the proprietor thereof and constitutes the grant of such rights in respect of the use of the said trademark with regard to specific goods or services contained in such registration within the territory concerned;
WHEREAS, countries and jurisdictions have a general duty and obligation to protect the integrity and ensure the accuracy of the Trademark Register and to ensure that no third party rights are unfairly prejudiced;
WHEREAS, aggrieved third parties having legitimate interests should be allowed an avenue to attempt to prevent the registration of a trademark where they hold a view that the registration thereof may conflict with their pre-existing rights in respect of an identical or a confusingly similar trademark or any other form of pre-existing right;
WHEREAS, it is deemed appropriate and advantageous to allow such an aggrieved third party to attempt to prevent the registration of the said allegedly offending trademark by way of initiating opposition proceedings with respect to the same;
WHEREAS, such opposition proceedings may be initiated prior to registration of the allegedly offending trademark, or, as in some countries, initiated within a limited period (usually 2-6 months) after registration of the said trademark; and
WHEREAS, while most countries in the world already have established in their trademark laws and procedures opposition proceedings as envisaged above, there are a number of countries which still do not have such opposition proceedings in their trademark laws and procedures;
BE IT RESOLVED, that INTA affirms the importance of establishing inter partes, adversarial opposition proceedings for the purpose of allowing interested third parties to attempt to prevent or contest the registration of a trademark where such registration may conflict with such third parties' pre-existing rights or other legitimate interests. Recommended minimum provisions of such opposition proceedings, include but are not limited to the following: (i) the publication of all applied-for trademarks for the purpose of opposition by the aforementioned interested third parties; (ii) the opportunity for such interested third parties to file an opposition in writing during the prescribed time; (iii) notification and the forwarding of a copy of any such opposition to the holder of the applied-for trademark; (iv) the opportunity for the holder of the applied-for trademark to file a response in writing to any such opposition; (v) independent determination of such opposition by person(s) not involved in prior examination of the applied-for trademark; (vi) a written decision by such independent review person(s) notifying all parties as to the outcome of any such opposition; and (vii) the right of any party to the proceeding to appeal such decision.
The benefits of opposition proceedings include:
- Promoting the greater integrity and accuracy of the Trademark Register, and benefiting trademark owners and the consuming public, by:
(a) allowing applicants and aggrieved third parties the opportunity to provide assistance to Trademark Offices when or before granting trademark registrations by providing information and materials that otherwise may not be readily available, but which may be necessary to render an accurate decision;
(b) deterring potential trademark applicants from applying for and using confusingly similar trademarks which may conflict with pre-existing rights or other legitimate interests of third parties; and
(c) giving some measure of confidence to a trademark applicant whose trademark is not opposed or who successfully defends itself in an opposition that its trademark is distinctive and registrable.
- Saving time and money; in most jurisdictions, opposition proceedings are typically less expensive and usually more expeditious means for parties to resolve conflicting trademark rights with respect to a trademark application, versus judicial proceedings. Further, opposition proceedings can save the unsuccessful trademark applicant from the cost of additional investment in a mark considered confusingly similar to a prior mark.
- Saving judicial resources; opposition proceedings will also reduce the time and effort the local courts would have to devote to validity challenges in infringement actions and also to expungement proceedings in respect of trademarks which did not go through opposition proceedings.
BE IT FURTHER RESOLVED, that INTA urges all governments of countries which do not yet have opposition proceedings as envisaged above to establish and make available such opposition proceedings as soon as possible to accord to all trademark owners and users the benefits mentioned above.
The Oppositions Subcommittee has determined that the term "opposition proceedings" would include opposition proceedings which are permitted to be commenced both prior to registration of the trademark as well as after registration of the trademark but within a limited period from the date of publication, usually within 2-6 months. This resolution does not comment on proceedings that do not fall within the scope of the aforementioned “opposition proceedings.” In addition, whether it is desirable to have pre-registration opposition proceedings or post-registration opposition proceedings (which are allowed in some jurisdictions but are not deemed cancellations) is beyond the scope of this resolution.
The Subcommittee conducted a study on countries which did not have opposition proceedings in their trademark laws and procedures and those which had recently established such proceedings in their trademark system. Fuller details of this study are found in the Subcommittee's Report
on this subject matter, which was presented to the INTA Board at the 2007 Leadership Meeting.
The Subcommittee noted that there is a trend for countries without such opposition proceedings to move towards having such proceedings in their trademark laws and procedures due to the advantages and benefits as envisaged above.
The Subcommittee also noted that one main reason why certain countries do not have opposition proceedings within their trademark laws and procedures is the low rate of filing within these countries. The Subcommittee understands the reality of the situation in such countries but nevertheless would encourage such countries to establish such opposition proceedings as soon as practicable.