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December 15, 2012 Vol. 67 No. 21 Back to Bulletin Main Page

INTA Adopts Resolution on Requirements for Pre- and Post-Registration Opposition System Jurisdictions

The Association’s Board of Directors has adopted a Resolution setting forth policy recommendations for jurisdictions with regard to the establishment of pre-registration or post-registration opposition proceedings. The Resolution, proposed by the Enforcement Committee’s Opposition and Cancellation Standards and Procedures Subcommittee, was presented and approved during the Board’s meeting held in Orlando, Florida, on November 7, 2012, in conjunction with the Leadership Meeting.

Aware of divergent opinions regarding the benefits and drawbacks of pre- and post-registration opposition systems, the Subcommittee conducted a study to determine whether there is, in fact, reason to prefer one system of opposition over the other from a public policy perspective.

The Subcommittee surveyed the opposition systems of 111 jurisdictions. The results showed that 92 of those jurisdictions allow for the filing of opposition proceedings, and ten of those offer post-registration opposition proceedings. The Subcommittee further surveyed those ten jurisdictions offering post-registration oppositions, questioning practitioners on the advantages and disadvantages of post-registration opposition proceedings as well as on the examination and enforcement procedures in their respective jurisdictions. The respondents generally expressed strong support for their current post-registration opposition system.

After balancing the pros and cons of both pre-registration and post-registration systems, the Subcommittee determined that neither system presents a significant net advantage over the other. However, it identified certain specific circumstances, namely when a Trademark Office conducts examination on absolute grounds only, when pre-registration opposition systems should be utilized to ensure that prior rights are considered before a registration is granted and significant trademark rights are conferred.

The Subcommittee also noted that in jurisdictions that offer only post-registration oppositions, allowing the owners of new registrations to file infringement actions before the expiration of the post-registration opposition period could prove problematic for trademark owners. Thus, the INTA resolution takes the position that any infringement action brought by a complainant based on a trademark registration that is still in the opposition period be suspended until (1) the opposition period has concluded without any oppositions being filed, and (2) any post-registration oppositions that have been filed have been resolved.

In addition, the research considered these two opposition systems in the Internet context. The group determined that pre- and post-registration opposition systems could potentially have different effects with regard to “sunrise” domain name registrations, as these domains are available only to trademark owners on the sole basis of their trademark registrations. The Subcommittee recommended that in jurisdictions with only post-registration opposition proceedings, a trademark should not be eligible for “sunrise” domain name registration until the post-registration opposition period has expired and any opposition proceeding filed against that registration has concluded

The Resolution is intended to help inform trademark offices from around the world in developing their opposition procedures. The recommendations will also be incorporated into the advocacy plan being developed by the Opposition and Cancellation Standards and Procedures Subcommittee to promote INTA’s established policy positions on opposition issues worldwide.

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.

© 2012 International Trademark Association