INTA Bulletin

September 15, 2016 Vol. 71 No. 16 Back to Bulletin Main Page

To Appeal or Not to Appeal?

The question, “To appeal or not to appeal?” has been analyzed by INTA’s Enforcement Committee during the past two committee terms. Now,  the task force of the Oppositions and Cancellations Subcommittee, under the leadership of Christoph Kleiner (Kleiner Rechtsanwalte, Germany), has recently come to a conclusion: to appeal.

Methodology and Results

The group conducted a detailed survey on the availability of appeal proceedings in oppositions (in 89 countries) and cancelation actions (in 74 countries) and analyzed the results in a report. In both opposition and prior rights cancelation proceedings, where examiners evaluated rights of the parties against each other to arrive at a decision, the availability of some form of appeal to either an appeal board or court was considered necessary by the majority of respondents to ensure that the decision was fair and equitable and that the rules of law were applied correctly.

This confirms INTA‘s position as manifested in its Board Resolution of September 22, 2008, which affirms the importance of establishing inter partes, adversarial opposition proceedings. As one of the recommended minimum provisions, the Resolution establishes the right of any party to appeal a decision rendered.

The survey showed that of the 89 jurisdictions covered in the opposition survey, 86 provide for an opposition mechanism, 81 allow either party to appeal the decision (opponent or applicant), and three jurisdictions only allow for an appeal by the applicant and do not allow the opponent to appeal. Of the 74 countries which allow for cancelation proceedings, both parties are allowed an appeal against the decision in all 74 jurisdictions.

To summarize, the majority of the surveyed countries provide for an appeal at either the administrative or judicial level available to both parties in oppositions and cancelation proceedings. This is in line with due process of law, which is a fundamental right embedded in many constitutions worldwide.

Speed versus Quality

One of the arguments raised by countries in which opposition decisions cannot be appealed by either party, or only one party, is that the shortened prosecution process serves to increase the speed of trademark registrations. In addition, these jurisdictions point to alternately available invalidity actions after the contested trademark is registered. The task force found, however, that while the removal of an appeal option may initially accelerate the granting of the registration, subsequent invalidity actions may still invalidate the granted rights and therefore simply postpone the delay to a later stage. This especially applies for jurisdictions in which only one party is allowed to appeal. Along with the delay comes an insecurity in the rights granted by the trademark office for both parties, which continues beyond the actual registration decision until the window for an invalidity action or the action itself has closed.

In addition, invalidity actions are almost always significantly more expensive and take longer, as they often are brought before the courts, whereas appeals to opposition or cancelation decisions are more likely to be administrative proceedings before a designated appeal board. Finally, appeal proceedings are said to increase the trust in the quality of the registrability decision. If a body on a higher level with more experienced legal practitioners renders this decision, it is more likely that it will be accepted and invalidity proceedings avoided.

Advocating for Appeal

In its conclusion, the Oppositions and Cancellations Subcommittee task force therefore emphasized that an appeal against decisions rendered in opposition/cancelation actions should be available to both parties, thereby enabling them to present substantive arguments in a second instance and preferably to a board consisting of members not involved in the prosecution and/or opposition decision. Mr. Kleiner’s group is planning on directing advocacy efforts towards those few countries which do not allow for the right to appeal for one or both parties in order to start a discussion and possibly create change.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2016 International Trademark Association