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What is a Notice of Opposition Against an EU Trademark Application and What Can I Do About it?
When filing for an EU Trademark to protect your brand, you might receive a Notice of Opposition from the EUIPO. You might be worried about this. Maybe you’re asking yourself: What is a notice of opposition? What can I do to register my trademark now? How can I make sure that my brand is protected in the EU? In this article, we will explain what a Notice of Opposition is and how to deal with it to ensure that you protect your IP.
First, let’s remind ourselves of the application process for EU trademarks.
Recap of EU Trademark Application Process
We must remember that once you have sent your application away, the EUIPO examiner will analyze it and look for any problems. If provisionally approved, your application will be published in the EU Trade Marks Bulletin for all to see. Any party that already owns a registered trademark now has 3 months to file a Notice of Opposition, which will prevent you from being granted protection for your trademark.
What is a Notice of Opposition?
A Notice of Opposition filed by a preregistered EU trademark holder is a claim to the EUIPO that your future trademark infringes on their pre-existing trademark, or is too similar and could cause confusion. This must be done by the opposing party within 3 months of publication in the EU Trade Marks Bulletin.
Once the filing has been completed, and the opposing party has paid the corresponding fees, the Opposition Division of the EUIPO will examine the Notice and determine its admissibility. This admissibility test is conducted in accordance with the EU Trademark Regulation. If it passes the test, you will be advised of the Notice and the next phase of the procedure will begin.
What can I do against a Notice of Opposition?
In order to go against a Notice of Opposition, you must first know the procedure that will be followed. Firstly, there will be a 2-month period in which you may negotiate with the opposing party to try to come to some sort of arrangement. If unsuccessful, you will then have to argue before the EUIPO. These are known as the cooling-off period and the adversarial stage.
Cooling-off period
Once you have been informed of the Notice of Opposition, a 2-month period begins in which you and the opposing party may attempt to reach a friendly settlement. This is known as the ‘cooling-off’ period. If you are able to reach an agreement with the opposing party, then whatever you agree shall be established and neither side will have to pay any costs for further phases of the procedure. If, however, you are unable to come to an agreement, the adversarial stage shall begin in which you must argue with the opposing party before the EUIPO as to why your trademark should be granted protection and, more importantly, why it is not infringing on the pre-existing trademark, nor is so similar that it would cause confusion.
Adversarial stage
In this next stage, the opposing party must complete his opposition filing within 2 months of the end of the cooling-off period – the Notice of Opposition was merely provisional. Here, the opposing party will include all evidence that supports his case, as well as proving that the IP rights he is invoking from his trademark truly exist and are valid. For an extensive description of what the opposing party must file and the requirements for doing so, check the Guidelines for Examination in the Office.
Responding to the Notice of Opposition
Proof of Use
In responding to the opposition, in the case that you believe the opposing party may very well have a registered trademark, but is not actually using it, you may request proof of use. This requires the opposing party to submit additional documentation that proves that he is actively using his trademark in a commercial environment. It is essential that every trademark owner is aware that it’s using it or lose it when it comes to opposition proceedings.
Restrictions of your Trademark Application
When filing the application to register your trademark, you will have had to specify which goods and services are traded under the brand. As this could be the grounds for the Opposition in the first place, you may also decide to restrict your application in order to limit the goods and services you provide under that brand, to prevent any potential infringement of the opposing party’s protection. This would only work in specific cases in which you and the opposing party are operating in similar or overlapping sectors. It is important to mention here that the EUIPO will not accept restrictions that are conditional. The restriction must be absolute and unconditional.
Formulate a Strong Legal Argument
Make a strong legal argument behind why your trademark application is acceptable may seem rather obvious, but it is much easier said than done. There is a reason that lawyers dedicate their entire professional lives to IP law. It is an area of the law that is always changing and evolving, not to mention that it has the potential to be incredibly subjective, given that a key factor in a EUIPO decision is how similar it looks compared to the pre-existing trademark.
If you want to have the best chances at a successful trademark application, it is highly recommended to hire the services of an experienced IP lawyer to go through the process with you. At Moeller IP, we have been practicing solely IP law for nearly 100 years across the world, and there is still more to do. If you would like to clarify some doubts, please don’t hesitate to contact us right away.
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What is a Provisional Refusal Opposing an International Trademark Registration and What Can I do?
After jumping through all the hoops to register your international trademark, filing the application, and following various quick guides on how to do so, it can be quite concerning to receive a notification of provisional refusal, stating that your trademark, your brand, has hit an obstacle in being protected.
What can I do to protect my IP now? you might be thinking. In this article, we will go over what a provisional refusal is, why it was most likely issued, and what you can do to oppose it and protect your brand.
International TM Registration Recap
The first thing to remember is the process of international trademark registration. After being initially approved by the WIPO, the notification is then sent out to all national trademark offices belonging to Contracting Parties of the Madrid Protocol. The national offices now have up to 12 months to grant or refuse protection (18 months in certain cases). If they refuse, they must send a Notification of Provisional Refusal to the WIPO, where you will soon after receiving news of it through the Madrid Monitor. It will probably look something like this.
It is important to note that it is not a final decision, but instead, the Office must indicate the reasons for why it could likely get refused. This could be from either a negative examination by the Office itself or due to an opposition from a third party. Such an opposition will most likely be from a local company, a preregistered TM holder, that believes that your trademark is infringing upon theirs, or is too similar to their own and could get confused.
It should be noted that this is a provisional refusal by opposition, which is different from an ex officio refusal, which occurs when the national office finds a fault in the application and decides to refuse protection of their own accord.
What can I do against a provisional refusal?
The next step will depend upon which country’s IP office put forward the provisional refusal. Each national office has its own specific procedure to deal with the matter.
All the necessary details should be included in the notification of provisional refusal you received. These details would likely include the grounds for the provisional refusal, the time period in which you must reply to the refusal and request a review/appeal, to whom you should direct such reply, and if you need to hire a local attorney in that country to assist you with the procedure.
If your request for review and appeal is accepted by the national IP office, you will likely have your trademark application compared with an already existing trademark registered nationally in that country.
Depending on what exactly you are wanting to register, the national IP office will compare the shapes, colors, words, and letters included, as well as the similarity of the service/good in relation to the pre-existing trademark, also taking into account the sectorial similarities if any exist. This process may take many months to come to its conclusion, however, every national office has its own rules and deadlines, so you should be very aware of the specific situation of every country.
To learn more about a specific country’s provisional refusal rules and procedures, take a look at our country-by-country guide that will take you through everything you need to know. EU & UK Guide. China & USA Guide. Brazil & Germany Spain & France.
Replying to a provisional refusal
Replying to a provisional refusal will often mean that you will have to convince the national office or a court of appeals why your trademark is sufficiently different from an already existing one in order to be granted protection of your IP. To do so effectively requires not only a strong argument regarding the differentiation of the trademark but also a comprehensive understanding of the legislation and the case-law of that country. Therefore, it is highly recommended that if you receive a notification of provisional refusal regarding your international trademark registration, that you should hire an experienced IP lawyer to help you in the process.
If you are wanting to reply to a provisional refusal, we have vast experience in these procedures and would be more than happy to explain the situation to you and see how we could help out. Contact us!
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American Region Suspension Deadlines COVID-19
By Moeller IP.
The latest update about the suspension of deadlines in the American Region Patent and Trademark Office.
Argentina:
| Brazil:
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Uruguay:
| Paraguay:
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Chile:
| Peru:
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Ecuador:
| Colombia:
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Venezuela:
| Mexico:
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Panama:
| Guatemala:
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El Salvador:
| Nicaragua:
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Honduras:
| Dominican Republic:
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Cuba:
| Bolivia:
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INPI Brazil | New Extension of Deadlines in Brazil by Ordinance No. 166/2020
By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.
Brazilian PTO published this Tuesday (04/28), Ordinance No. 166/2020, which extends until May 15, 2020, the suspension of deadlines referred to in Ordinance No. 120 and 160/2020, due to administrative measures to prevent infection and the spread of COVID-19.
- The Ordinance applies to all processes pending at Brazilian PTO, regardless of their nature. Therefore, deadlines are suspended for all cases.
- The Ordinance also implies the interruption of the counting of the deadlines that are in progress, which will flow again for the time remaining at the end of the suspension period. In other words, the term will be counted from where it left off.
- The terms that start in this period will start counting after the end of the suspension.
- The use of term suspension is optional and the user can petition at the INPI, through the online systems, if they prefer.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
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Argentinian Patent and Trademark Office Extends Suspension of Terms Determined by Resolution Nr. 34-2020
The Argentinian Patent and Trademark Office published the Resolution Nr 34-2020 in the Electronic Official Bulletin of April 13, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020 and 22-2020, until April 26, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
Source: https://www.boletinoficial.
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The three stripes controversy
By Maria Sol Porro, Trademarks Lawyer and University Professor.
Nullity of the Adidas Community trademark
Last June, the General Court of the European Union (EGC) announced one of its most resounding decisions to date. Confirmed the nullity of the Adidas Community trademark, consisting of three parallel bands. This is due to the fact that the German company did not demonstrate the distinctive character of it throughout the territory of the European Union (EU).
The legal battle for the three stripes is part of the dispute that Adidas and the Belgian company, Shoe Branding Europe BVBA, began in 2009, when the latter tried to register their two lines against the European Union. In this case, Adidas objected before de European Union Intellectual Property Office (EUIPO) on the grounds that they closely resembled its three parallel bands. Based on this claim, the EUIPO denied registration to the Belgian company on two occasions (2015 and 2016). It is important to remark that Adidas had not proceeded to register its three lines before the EU until this point.
Once this judicial contest was won, Adidas decided to request in December 2013 the registration of the famous three parallel bands as a community trademark before EUIPO, which gave its consent. However, on this occasion, it was BVBA who opposed the decision based on the denial of their two lines. This opposition led EUIPO to change its mind and cancel Adidas’ registration, arguing that this sign does not have the “distinctive character” required to a trademark.
Subsequently, the decision was appealed to the EGC, based in Luxembourg, who confirmed in its resolution the cancelation decided by EUIPO, considering that Adidas had not been able to demonstrate that the use of the three stripes has distinctive character in the entire European Union to identify the brand. This last decision of the EGC is outstanding since it is contradictory to the decision of the mentioned case of BVBA in 2009, in which the Court did consider that Adidas had managed to demonstrate the notoriety of its design of the three stripes to deny the registration of the two stripes of the Belgian company.
Against this background and the fall of its shares by more than 1% on the German stock market, Adidas still has the option to appeal the decision of the EGC before the Court of Justice of the European Union (CJEU), having only two months of the term. Then, it will be necessary to wait to see if the German company manages to revert this situation or if the Belgian company, BVBA, will hang Adidas with its own rope.
Source: www.elespectador.com
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Brazilian Senate Approves Special Protection Bill of “High Reputation” Brands
By Carlos Cavalcanti, Managing Partner Moeller IP Brazil
The Brazilian Senate Plenary approved on Tuesday (2) the bill that creates rules for special protection of “high reputation” brands. PLC 86/2015 allows the holder of an industrial trademark to request the Brazilian PTO (Inpi) to recognize this title at any time. The text has been modified and will have to be returned to the Chamber of Deputies.
“High reputation” is a classification that guarantees a brand protection in all markets, not just the one in which it operates. With this recognition, no other company can be registered with the same name, even if it is from another branch. Inpi currently recognizes 41 “high reputation” brands.
PLC 86/2015 regulates the Industrial Property Law (Law 9.279 / 96) to specify that “high reputation” may be requested at any time. Currently, only an INPI internal standard addresses this issue. According to the rule, the interested parties must wait for a third party to request the registration of the same mark in another branch.
The text also determines that, in case of approval of the application, the recognition of its “high reputation” will be noted in the trademark register. Thus, the owner of the mark will have a document proving his right to special protection. The classification can be challenged at the request of third parties with “legitimate interest” that require the Inpi an examination of the classification substandard.
“The current legislation is silent on the process of recognizing a brand as being highly reputed,” said the rapporteur of the project, former senator Flexa Ribeiro (PSDB-PA), in his opinion.
At the Commission on Science, Technology, Innovation, Communication and Information Technology (CCT), the project has been granted a mandate that the recognition of the high reputation be valid for 10 years, and that the renewal application be justify.
Source: senado.leg.br
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McDonald’s Loses Flagship Trademark “Big Mac” in the European Union
After years of confrontation with the small Irish supermarket chain, “Supermac”, founded in 1978, the European Union Intellectual Property Office (EUIPO) has revoked the rights to use the “Big Mac” brand in the European Union, registered by the multinational-nal “McDonald’s”.
The conflict began in 2015 when “Supermac” wanted to expand its 100 stores throughout the United Kingdom and other areas of the EU, trying to register the “Supermac” trademark on these sites. However, he found that although none of the products offered by the Irish was called ¨Big Mac¨, the multinational used the similarity between the two trademarks to block the expansion, preventing the registration of “Supermac” in the EU, pointing out that the similarity of both TM could confuse consumers. In this case, the EUIPO agreed with the US multinational due to the similarities between the two signs and the possible confusion alleged by McDonald’s.
Before this blockade by the multinational, the Irish fast food chain presented its claim against EUIPO in April 2017, requesting the revocation of the protection on the trademark “Big Mac”, alleging that “McDonald” registers and retains different denominations to use against its future competitors.
In relation to this new requirement, the community body decided to admit the claim of “Supermac” and revoke the registration of the trademark owned by “McDonald’s” because the US company had not demonstrated a “genuine use in a significant part of the European Union” of the same during the five years prior to the filing of the aforementioned case, which was in 2017. For this reason, “Supermac” may use the denomination ¨Big Mac¨ in any product that sells at the present. However, it is important to remark that, since TM ¨Big Mac¨ is also registered at the national level, “McDonald’s” will not lose its protection in these areas.
However, the last word has not yet been said, as a spokesperson for the hamburger multinational has declared that “McDonald’s” will appeal the ruling of the EU Intellectual Property Office. In this way, the resolution will go to the resource room of the community body, in which the US company may provide new evidence, with the final decision reaching the Court of Justice of the EU, based in Luxembourg.
Source: https://elpais.com/economia/
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8 Keys to Understand the New European Trademark Directive
Nowadays the economic markets experience constant and vertiginous changes in the way in which daily transactions are developed, both of goods and of services. Within these markets, not only material assets have a paramount value, but also the signs used to identify them and to distinguish them from the rest of the competitors, that is, the so-called intangible assets.
Therefore, it is not surprising that the European Union decides to harmonize the laws of each of its members in relation to the type of trademarks that can be requested before the European Union Intellectual Property Office (EUIPO), the requirements of the applications and also of the form of processing.
For this reason, on December 16, 2015, Directive No. 2015/2436 was issued, “on the approximation of the laws of the Member States regarding trademarks”, which entered into force on January 14, 2019. In this sense, it is important to point out that since a Directive is the one that establishes these rules in trademark issues, each European country must dictate a national law to transpose the community regulations to its national scope in order to avoid any type of penalty in case of not doing it.
8 changes on the European Trademark Directive
Based on the previously mentioned, we will comment on the main changes that will have greater impact on the day to day of professionals and owners of industrial property rights, both in Europe and in the rest of the world, namely:
I- Legitimization to obtain the registration of a trademark.
From now on, they will be entitled to apply for and register a trademark, natural or legal persons, whether they are nationals of the European Union or of another country outside the Union. However, it is important to note that the latter, when they are legal persons, must do so with an EU agent or lawyer with the corresponding authorizations.
II – Requirement of graphic representation disappears.
What until now was a fundamental requirement, will cease to be required when submitting an application to EUIPO. In other words, it will only suffice if the sign can be represented in such a way that there is sufficient clarity about the object to be protected and that it can be published in the Official Gazette. As a consequence of this change, the range of possibilities for the registration of non-traditional brands (brand of form, position, pattern, movement and holograms, among others) is broadened, which, added to technological changes, will allow adequate representation in the Official Gazette for later registration.
III- New types of brands.
On one hand, the multimedia trademark is incorporated, which is a combination of image and sound that will be represented by the presentation of an audiovisual file that contains the combination of the image and the sound (EJ: video game). On the other hand, the trademark of certification or guarantee which allows to distinguish the products or services that its owner certifies with respect to the materials, the way of manufacturing the products or the rendering of the services, the quality, the precision or other characteristics, with the exception of the geographical origin, of the products and services that do not possess this certification, without the need of belonging to any group or entity.
IV- The ¨notorious trademark¨ disappears.
Prior to the new directive, signs that reached a certain degree of popularity could be called “notorious” (popular brand within a specific market) or “renowned” (popular brand for the consuming public in general). With the new directive, the “notorious” brand category is absorbed into the “renamed” brand. Therefore, the old “notorious” brands must accredit their wide use and knowledge in the general public to achieve this recognition.
V- Changes in the registration procedure.
The main news about the registration procedure are related to the legitimacy to formulate opposition, including those of the licensees of a trademark, by imposing on the opponent the obligation to prove the use of the trademark on which it is based. the opposition and, finally, for the total renewal of the brand, as it will be enough with the payment of renewal fees to renew the trademark.
VI- Priority claim.
It must be filed now with the trademark application. The priority is what allows the owner to request the trademark in any member country over a period of six months, but taking as a reference the date of application to the European office. Until now, it could be requested for three months from receipt of the priority declaration.
VII- Acquisition of distinctive character due to use.
The Office will only examine the acquired distinctive character if there is a request from the applicant for the European Union trademark. As regards the application deadlines, both types of claim can be presented: together with the application; or at the latest, in response to the first objection of the examiner. It will not be possible to present claims in the appeal procedures.
VIII- Increase in anti-piracy measures.
Piracy is a major problem at present for trademark holders and licensees. Therefore, even if the products (which contain identical or virtually similar brands) are not going to be marketed in the TM holder or licensee’s country within the EU, if not in another EU country, a trademark owner may prevent the transit of these products through his country. In order to do so, it is only required that the base trademark of the enforcement action is registered in the country where the product in question will be marketed (destination country).
Conculsions of the changes in the Europan Trademark directive
To conclude, we understand that the changes introduced will lead, among other things, to the simplification, efficiency and strengthening of the trademark protection system in the EU. And, although the objective of this reform as a whole is to strengthen the European Trademark Network, it is important to bear in mind that these changes will mean a new challenge for the European administrations, having to adapt its work system to the required changes in record time.
Source: https://www.fidefundacion.es/
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Amendments to the Trademarks Legislation
We live in a dynamic reality, and in no area is that more evident than in commercial law, which constantly adapts to the new practices and requirements of an ever-changing world market.
With the backdrop of the globalized marketplace in mind, the Mexican Government has recently approved a series of amendments to the IP Law, which will be effective as of August 10, 2018. There are several amendments in relation to trademarks that will change how we are used to working in this country: The very definition of what a trademark is has changed, and although the essence is still the same, it can now be constituted by any sign perceived by the senses that may identify or define a product or service. The text now allows for the registration of holographic signs, sounds and smells, which were previously barred from registration. Trade dress and certification mark registrations are also included in the new text.
A new requirement has been included, as a declaration of effective use will have to be filed during the third year of registration. If this is not done, the registration will expire. No extension is possible. This also applies for renewals: In order to renew a registration the use in at least one of the protected products in that registration will have to be declared.
It is important to highlight that only the registrations granted after the effective date of these amendments will be held to the obligation of filing a Declaration of Use.
Date of first use is required in the application. Failing or neglecting to do so will be considered as a declaration of no prior use. This cannot be amended.
Perhaps one of the most relevant amendments is the fact that Consent Letters or Co-Existence Agreements will now be binding for the Examiners in cases of likelihood of confusion, even if the resemblance between the marks is very high. Although a bold move, we have yet to see how it is enacted.
Finally, a completely new relevance has been given to the concept of “bad faith,” allowing for objections and oppositions to applications based on the bad faith of the applicant. The amendments also include a revision of the grounds for cancellation of a mark based on bad faith, when there has been a commercial relation between the parties.
These are only some of the amendments included in the new legislation, which is not yet effective, and a Regulation for this new Law is still pending. Therefore, how it will be enacted and applied is yet to be seen. However, it is useful to have this in sight, in order to prepare clients for the new scenario.
Source: http://dof.gob.mx/
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