November 7, 2012
Opposition & Cancellation Standards & Procedures Subcommittee of the Enforcement Committee
WHEREAS, trademark applications may be examined on absolute grounds only or on both absolute and relative grounds;
WHEREAS, jurisdictions maintaining opposition systems may allow proceedings to be initiated either prior to registration of the allegedly offending trademark (pre-registration) or, after registration (post-registration) usually within a prescribed time period; and
WHEREAS, it is recognized that both pre-registration and post-registration opposition proceedings generally present advantages and disadvantages.
BE IT RESOLVED, that it is the position of the International Trademark Association that:
- Jurisdictions that do not examine trademark applications on relative grounds prior to registration should maintain or adopt pre-registration opposition proceedings to ensure that relative grounds can be considered prior to the registration of a trademark and to maintain the integrity of the Trademark Register;
- In jurisdictions that maintain only post-registration opposition proceedings and allow the filing of infringement actions prior to the expiration of the post-registration opposition period, an infringement action brought by a complainant whose registration is still within the post-registration opposition period, should not be decided until the post-registration opposition period has expired, and until any post-registration opposition proceeding filed during the opposition period has been resolved; and
- Trademark registrations obtained in a jurisdiction with only post-registration opposition proceedings should not be eligible for Internet “Sunrise” domain name registrations until the post-registration opposition period has expired, and until any opposition proceeding filed against such registration has been terminated.
In light of the ongoing debate over the advantages and disadvantages of pre-registration and post-registration opposition proceedings, the Opposition and Cancellation Standards and Procedures Subcommittee conducted a study to determine whether, in fact, one system of opposition did present significant benefits over the other.
The post-registration opposition proceedings should be distinguished from cancellation proceedings as post-registration oppositions must be filed in the trademark office within a certain time frame (generally two to six months from the date of publication/registration) whereas cancellation actions are filed thereafter and generally in the courts.
Through its research, the subcommittee examined 111 jurisdictions, 92 of which allow for the filing of opposition proceedings. Of these, only ten jurisdictions (Denmark, Finland, Germany, Iceland, Japan, Norway, OAPI, Poland, Sweden and Switzerland) offer only post-registration opposition proceedings. Some countries, such as Germany, observe the European Union Community Trade Mark system of pre-registration opposition, but allow for only post-registration opposition of their domestic trademarks and as a result practitioners often take advantage of both systems.
The subcommittee then conducted a survey in those jurisdictions that provide for only post-registration opposition proceedings in which practitioners were asked to provide comments regarding the advantages and disadvantages of post-registration opposition proceedings as well as the examination and enforcement procedures. The survey results revealed strong support for the post-registration opposition system in these jurisdictions, and practitioners from only three countries expressed a need for change in their respective examination systems. As such, after balancing the advantages and disadvantages of each opposition system in various situations, the subcommittee developed the above recommendations and urges their implementation to the extent that jurisdictions are creating opposition procedures where none currently exist or are reviewing existing opposition procedures for potential revisions.
In addition, the subcommittee considered the implications of pre and post-registration opposition systems in the Internet context. In particular, it considered whether pre- vs post-registration oppositions may have different effects on “Sunrise” domain name registrations, since trademark registrations alone form the basis of early domain name registrations during the Sunrise period.
For the introduction of new generic top-level domains (gTLDs), ICANN has addressed this issue by stating that “[p]rotections afforded to trademark registrations do not extend to trademarks within any opposition period.” We recommend that the Internet Committee monitor ICANN’s implementation of this rule, to ensure clarity around the requirement that the mark must be registered and not within any opposition period or the subject of a post-registration opposition.
Based on the subcommittee’s findings, the advantages and disadvantages of the two systems can be summarized as follows:
Pre-registration Opposition Proceedings:
- Provide an early opportunity for trademark owners to protect their rights by opposing identical or confusingly similar marks from being registered and from benefiting from the rights of registration.
- Help to maintain the integrity of the Trademark Register by deterring the registration of invalid trademarks.
Post-registration Opposition Proceedings:
- Pre-registration oppositions can lengthen the time period from application to registration.
- Nuisance third parties may file a pre-registration opposition for tactical reasons to delay the grant of registration subject to standing requirements.
- Often result in applications proceeding to registration in less time.
- Allow trademark owners to commence infringement proceedings based on a registration as early as possible.
- Inhibit nuisance third parties from blocking issuance of a registration by filing an opposition for tactical reasons.
- Reduce the number of oppositions being filed.
- Facilitate trademark pirates in obtaining a registration without providing the legitimate trademark owner with an opportunity to challenge the registration prior to grant.
- Offer trademark pirates the possibility to obtain a registration to use as the basis for filing in a country/region that allows a party to obtain rights on the basis of a home registration. For example, a trademark pirate could theoretically register a trademark in Germany and then use that registration as the basis for an International Registration and/or an application in the USA.
Based on its analysis, the subcommittee has determined that, generally, pre-registration opposition proceedings do not provide any significant advantages over post-registration opposition proceedings. However, if a country does not examine its applications on relative grounds, then pre-registration opposition proceedings should be made available to ensure that the existing rights of others are considered before the trademark is registered and significant rights are bestowed upon the registrant. This procedure would also address the possibility of trademark pirates obtaining an International Registration based upon a local registration and help to maintain the integrity of the registry. In any case, even if an infringing registration is obtained in a post-registration opposition country and used as the basis for an International Registration, if the registration that forms the basis of the International Registration is successfully opposed in the home country, then the International Registration would fall as well.
The subcommittee further notes that most post-registration jurisdictions do allow the owner of a new trademark registration to commence infringement proceedings against a third party before the end of the period during which the registration may be opposed. In practice, most trademark owners do not commence such proceedings before the end of the opposition period for tactical reasons. However, because of this possibility, the subcommittee recommends that post-registration jurisdictions not decide infringement actions brought by a complainant whose registration is still in the opposition period until the period has ended without any oppositions filed and until any post-registration oppositions that have been filed are resolved.
Therefore, the Opposition and Cancellation Standards & Procedures Subcommittee of the Enforcement Committee recommends that the Board of Directors approve the above resolution regarding requirements for pre- and post-registration jurisdictions.