On September 19, INTA’s Board of Directors adopted a Resolution
establishing guidelines for determining who should decide opposition proceedings. The Resolution was proposed by the Enforcement Committee’s Opposition and Cancellation Standards & Procedures Subcommittee.
In considering who should decide oppositions, the Subcommittee surveyed many jurisdictions to determine who currently decides oppositions and to identify advantages and disadvantages of using certain types of personnel as “Opposition Decision Maker.” The Subcommittee concluded that oppositions should not be decided by the individual(s) who examined or approved the application, since such individuals might be biased by their own decision to permit registration or by information obtained or actions taken during examination that would not otherwise be considered in opposition proceedings.
INTA’s guidelines set forth that the approving examiner should not be among the decision makers; and, if decision makers do belong to the examiner class, there should be oversight mechanisms giving decision makers outside the examiner class the authority to review, confirm or reverse decisions or to request that the decision maker further analyze or clarify a particular issue or the decision analysis.
The Subcommittee’s research determined that the guidelines are followed in many but not all jurisdictions that offer opposition proceedings. For example, in South Korea, a panel of three trademark examiners decides oppositions, and are not subject to the oversight proposed in the resolution. In Turkey, a single trademark examiner decides the opposition with no oversight.
INTA will work to encourage the adoption of the new guidelines in all countries.
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.
© 2011 International Trademark Association