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Board Resolutions
Extension, Deferral, & Suspension of Opposition Proceedings





September 22, 2009 

Sponsoring Committee: Opposition and Cancellation Standards & Procedures Subcommittee of the Enforcement Committee


Resolution

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;

WHEREAS, it should be possible to initiate such opposition proceedings prior to registration of the allegedly offending trademark, or, as in some countries, within a limited period of time after registration of the said trademark;

WHEREAS, most countries allow for some limited form of obtaining an extension, a deferment and/or suspension prior to or during opposition proceedings for the purpose of allowing the parties to explore potential settlement and thereby reduce costs for the parties and the relevant authorities;

WHEREAS, the mechanism by which the relevant authority allows for such extension deferment and/or suspension of proceedings currently varies from country to country, and includes, but is not limited to, pre-registration extensions of time to oppose, post-filing extensions of time, cooling-off periods, deferments, suspensions or other consented or discretionary forms of obtaining a period of time for the parties to explore settlement options (collectively referred to as “E/D/S”);

WHEREAS, each country should provide some form of E/D/S in a manner that does not substantially aggrieve or delay the rights of any party; however, the varied means of E/D/S provided from country to country need not be harmonized; and

WHEREAS, the benefits for allowing some form of limited E/D/S include:

  1. Saving time and money for the parties, because in many jurisdictions the number of oppositions that settle on terms agreed between the parties is greater than the number of oppositions decided on the merits by the relevant authorities.
  2. Saving judicial resources, in that allowing for a period of time for the parties to discuss settlement options would reduce the time and effort the relevant authorities would be required to devote to ongoing opposition proceedings.
  3. Reducing prejudice to the parties’ and third parties’ rights by limiting any allowed E/D/S in both time and scope.
  4. Reducing prejudice to the relevant authority, by not allowing indefinite deferment or suspension of the opposition which would cause potentially unnecessary delay and expense for the relevant authority in handling and maintaining such oppositions on their dockets.
BE IT RESOLVED, that INTA affirms the importance of allowing some form of extension, deferment and/or suspension prior to or during opposition proceedings, which is limited in both time and scope as appropriate and reasonable for the purpose of allowing the parties to explore potential settlement of the opposition.

BE IT FURTHER RESOLVED, that INTA urges all countries to allow for some limited form of extension, deferment and/or suspension in opposition proceedings.


Background

The Oppositions Subcommittee has determined that E/D/S covers a multitude of different methodologies used by the authorities in countries that allow for oppositions. The different forms of E/D/S include pre-filing extensions of time to oppose, post-filing extensions, deferments or suspensions, whether consented by the parties or discretionary to the relevant authority. While the Oppositions Subcommittee does not find that there is any particular means of E/D/S/that would be preferable, it does find that some limited form of E/D/S is preferable to none.

The Subcommittee conducted a study on countries which have opposition proceedings in their trademark laws and procedures and reviewed whether E/D/S is available and in what form. Details of this study are found in the Subcommittee's Report on this subject matter.

The Subcommittee agrees that while there can be substantial benefit to allowing some form of E/D/S, any E/D/S should be limited, and not indefinite, to prevent prejudice to either party, the relevant authority, and/or interested third parties.