November 13, 2013
: Opposition and Cancellation Standards & Procedures Subcommittee of the Enforcement Committee
WHEREAS, it is acknowledged that it is beneficial to allow third parties the opportunity to prevent the registration of a mark by initiating opposition proceedings, and the opportunity to cancel the registration of a mark by initiating cancellation proceedings;
WHEREAS, the term “cancellation proceedings” herein refers to cancellation proceedings based on any available grounds (e.g., likelihood of confusion, lack of distinctiveness, fraud);
WHEREAS, the owner of a trademark application or registration has an obligation to participate fully in all aspects of the trademark application process and post-registration maintenance of rights;
WHEREAS, requiring full-scope review on the merits of an opposition or cancellation proceeding despite a failure on the part of the applicant/registrant of the challenged mark to respond or answer such opposition or cancellation proceeding presents an undue burden on trademark office or court resources and imposes undue delays in the process; and
WHEREAS, default judgments conserve the resources of the trademark office or court.
BE IT RESOLVED, that INTA urges all jurisdictions to allow for default judgments to issue in inter partes opposition and cancellation proceedings when the applicant or registrant of the challenged mark has not timely answered or otherwise officially responded to the same.
The Opposition and Cancellation Standards & Procedures Subcommittee of the Enforcement Committee has surveyed the opposition and cancellation standards and procedures in countries and jurisdictions around the world and considered whether INTA should express a preference as to whether default judgments should issue in such proceedings when the applicant or registrant of the mark being challenged has not timely answered or otherwise officially responded in the proceedings. See the Subcommittee's Report on Default Judgments in Inter Partes Opposition and Cancellation Proceedings
The Subcommittee initially considered whether non-use cancellation proceedings should be excluded from the scope of the survey. Because proof of use by the registrant is an essential element in the defense of the registration, there may already be a greater degree of harmonization in such cases, with the registrant’s failure to respond in the proceeding with evidence of its use of the mark resulting in a judgment in favor of the petitioner in most jurisdictions. That said, it is not necessary to exclude non-use cancellation actions from the scope of this Resolution, because judgment against the registrant in the case of its non-response in that situation is nonetheless also appropriate.
Although according to the survey, more countries and jurisdictions did not allow for default judgments in either circumstance than those that did in one or both (28 vs. 21 respectively), and there appear to be reasonable justifications for each approach, the rationale for granting default judgments in both opposition and cancellation proceedings are more persuasive than those for not granting default judgments in such matters. Some justifications in support of default judgment include:
1. It conserves the resources of the trademark office or court (and the opposer or cancellation petitioner) in that the proceeding ends there and no further evidence or arguments need be filed and a decision on the merits does not need to be reached.
2. It speeds up the opposition and cancellation process.
3. Because trademark registration confers exclusive rights, there is an interest in having the applicant actively participate in the registration process, and granting default judgments arguably advances that interest.
4. It deters fraudulent applications from being filed in the first place in that the applicant will know that the fraudulent application will likely be opposed by the legitimate trademark owner and it will have to respond in the opposition proceeding.
5. It helps keep the register clear of trademark registrations that presumably the owner is no longer interested in.
Although there may be times when the non-response is inadvertent, this is not something inherent to default judgment systems only, as it may occur in other procedures as well (inadvertent non-response to examiner’s inquiry, inadvertent non-response to Office Action, inadvertent nonpayment of the fees, and other actions which are subject to statutory deadline), and thus is not a strong reason to deny the availability of default judgment in opposition and cancellation proceedings. The applicant/registrant should have a duty to keep its contact information updated with the trademark office in order to timely receive notices of opposition and petitions for cancellation. Furthermore, the risks of inadvertent non-response can be adequately dealt with through procedural mechanisms such as (a) the issuance to the applicant/registrant (and/or its filing correspondent/counsel) of an order to show cause why default judgment should not be granted and/or (b) a preliminary review by the trademark office of the notice of opposition or petition for cancellation that valid grounds have been alleged before issuing any default judgment.
The Subcommittee therefore recommends that in the event that the owner of a trademark application or registration does not respond to an opposition or cancellation proceeding (respectively), the relevant trademark authority shall issue a default judgment against them and provide adequate safeguards to protect trademark owners from having their marks cancelled or registrations refused due to inadvertent non-response or frivolous filings.