Argentinian Patent and Trademark Office Establishes the Reinstatement of all Suspended Terms by Resolution No. 194-2020.
The Argentine Patent and Trademark Office published in the Official Electronic Bulletin dated November 24, 2020, Resolution No. 194-2020. This Resolution establishes the reinstatement of all suspended terms as from December 14, 2020.
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The Argentinian Patent and Trademark Office published the Resolution N 183-2020 in the Electronic Official Bulletin of November 10, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020, 142-2020, 167-2020 and 171-2020 until November 29, 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.Read More
The Argentinian Patent and Trademark Office published the Resolution N 171-2020 in the Electronic Official Bulletin of October 27, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020, 142-2020 and 167-2020 until November 8, 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.
The Argentinian Patent and Trademark Office published the Resolution N 167-2020 in the Electronic Official Bulletin of October 14th, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020 and 142-2020 until October 25th, 2020, inclusive.
Please do not hesitate to contact us at any time with any doubt or questions you may have.Read More
The Argentinian Patent and Trademark Office published the Resolution N 142-2020 in the Electronic Official Bulletin of September 22nd, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020 and 127-2020 until October 11, 2020, inclusive.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
The Brazilian PTO has postponed the entry into force of the resolution that regulates the division of trademark applications/registrations (Resolution 244, of August 27, 2019) to July 1, 2021. Until this new date, it will not be possible to divide applications or registrations of brands. As a consequence, before the mentioned date, international multiclass deposits, which entered Brazil through the Madrid Protocol, cannot be divided either.
Brazilian PTO informs that, as of September 15, 2020, co-ownership will become an option in trademark applications, through the following services:
– Code 389 (Trademark registration request with pre-approved specification) – value per class; and
– Code 394 (Trademark registration request with free entry specification) – value per class.
In addition, using service code 349 (Holder transfer note), an order or registration with a single holder may be transformed into an order or registration with more than one holder, also allowing for any future transfers involving any issue in co-ownership.
If you’ve received a notification of provisional refusal in response to your international trademark application from the French or Spanish national trademark offices, here you will discover what the procedures are to go against such a notification and fight to protect your IP in Spain and France.
Provisional Refusals France
In the French trademark system, the key legislative documents to keep in mind are the French IP Code and Law 2007-1544. The national French IP Office is the INPI. Once the INPI has received your application from the WIPO, it will take 6 weeks before it is published in the French Trademark Gazette. From this date, any pre-existing French trademark holder will be able to file an opposition with the Director General of the INPI.
Notice of Opposition
At this point, the applicant will be notified of the opposition, its grounds, and will be granted a time period within which to respond to the opposition. This counterstatement shall be your official argument against the opposition, so make sure that your arguments are bulletproof so that they stand up well before the INPI.
Here is a good point to highlight the importance of sticking to the deadlines placed upon you by either the INPI or the French/European trademark regulations. Often, such deadlines are non-extendable, so if you do not file the correct paperwork in the time given, your application (or opposition) will fail.
From the date of filing the opposition, the INPI must, by law, make a decision and notify the parties within 6 months. If no decision has been made, then the opposition will be rejected and the trademark application successful. This 6-month time period may be suspended if one of three situations arises:
- The INPI finds that the supposedly pre-existing French trademark was never registered
- One of the parties requests a suspension due to a claim pending before the courts
- Both parties request a suspension of three months, which can be renewed if both parties agree. This would often be due to the parties attempting to reconcile their differences and come to some sort of amicable agreement.
The first decision received will be a draft decision – technically a preliminary assessment of the matter – which then gives both parties the chance to submit their observations and further argue their claims within one month of receiving the draft decision. However, this opportunity to further argue your point, if the INPI has made an unfavourable draft decision, is in practice rarely effective in overturning the INPI’s initial decision.
Once the final decision has been made, there is a strict time period allowed for either party to appeal this decision to the French appellate courts. For French nationals, this time period is 1 month; for non-French nationals, this time period is 3 months. This is a crucial stage for the losing party, and it is their last real chance at protecting their IP in France.
It should be well noted that, in order to convince a judge that the INPI came to the wrong conclusions in their decision, your legal arguments must be very well-structured and coherent. Unless you are an experienced IP specialist, then it would be wise to hire a trustworthy IP lawyer to take you through the proceedings.
Provisional Refusals Spain
As one of the top European economies, with various strong industries such as tourism, it is a common territory to file for trademark protection. In Spain, the relevant legislation to be aware of is the Spanish Trademark Law, and the national IP office is the OEPM.
Notice of Opposition
Once an application has passed through the OEPM and has been published in the Official IP Bulletin, any pre-existing Spanish TM holder will have 2 months to file an opposition before the OEPM. Such an opposition will have to be started by filling out Model 4104, where the opponents case will be made as to why the applicant’s trademark would infringe on his pre-existing IP right. An important feature of the opposition in Spain is ability to attach a file to the Model in which you may exhaustively reason your claim. There is no limit on space or how many words may be used, therefore an experienced IP lawyer would be very useful at this stage of the trademark opposition proceedings. However, the OEPM does recommend not to be too repetitive or unclear in this file – if you go over the top, it could do more harm than good.
There are certain requirements in order for the opposition filing to be accepted by the OEPM found in article 26 of Royal Decree 1937/2004. If the filing has some sort of irregularity, don’t worry – you will be granted 10 days to remedy any defect and carry on with the opposition proceedings.
The applicant, once having received the opposition filing, will then have 2 months to file a counterstatement to the opposition, in which they will do the same as the opponent, reasoning why their Spanish trademark should be registered. Here, it is important for the applicant to understand that they have the right to withdraw or alter their application at any time. This would be wise in the case that a pre-existing Spanish trademark provides certain goods and services that seem to overlap with the goods and services described in the initial trademark application. If the applicant believes that they can commercially operate perfectly fine under a slightly different definition of the goods and services they provide, then that would be ideal. Again, the same criteria apply as for the initial opposition filing – that it be clear and concise, without repeating your arguments for the sake of filling out the form in an extensive manner. Once filed, the OEPM will then examine the claims and make a final decision, which will be notified to the parties.
This, however, is not necessarily the end of the road. If the final decision of the OEPM is unfavorable to your claim, you may still appeal against this to the Contentious-Administrative courts within a period of 1 month from the publication of the result in the Official IP Bulletin.
It must be stressed that throughout the trademark opposition proceedings, legal clarity and coherence in your arguments are of utmost importance, whether arguing before the OEPM or the Contentious-Administrative courts. Additionally, if you are to convince a judge that the OEPM made a mistake, the legal arguments must be very strong. Unless you have a vast experience in IP law and trademark protection, then it is highly recommended to make use of a specialist IP lawyer.Read More
If you are looking to designate Brazil or Germany in your international trademark application, this article is perfect for you. Here, we shall cover the procedure relating to notification of provisional refusal by a pre-registered Brazilian or German TM holder who believes that your international trademark application would infringe on their pre-existing IP rights.
Here, we will go over the procedures to go against such a notification and fight to protect your IP in Brazil and Germany.
Provisional Refusals Brazil
Brazil recently joined the Madrid Protocol in 2019, making it one of the newest members of the Madrid Union. In the Brazilian legal framework, the key law to be aware of is the Law on Industrial Property (9,279/1996), and the national TM office is the Brazilian Patent and Trademark Office (BPTO).
It should be noted that due to the nature of Brazil’s accession to the Madrid Protocol, if you already have an international trademark then you will not be able to simply designate Brazil as a new territory in which their brand is protected, but instead you will have to file a separate international registration from the beginning through the WIPO or choose to file a national application through the BPTO.
Therefore, if you have manoeuvred this system and have submitted your international trademark application, then that’s the first obstacle over and done with.
Brazilian IP Gazette
Once the BPTO has received the application, it will be published in their national bulletin, the Brazilian IP Gazette. From this date, any third party may file an opposition against the application within 60 days. The notice of opposition will then be published in the Brazilian IP Gazette around 60-90 days after the filing of the opposition.
At this point, all applicants should be aware that, unlike other members of the Madrid Union, Brazil does not publish any notice of opposition through WIPO channels – they will only be published on the Brazilian IP Gazette. Therefore, all applicants should be aware of the need to monitor the updates on the Gazette throughout the duration of the application procedure – we offer this service free of charge with any international trademark application.
The trademark applicant then has 60 days from the date of the publication of the notice of opposition to reply and reinforce their claim. Once submitted, the BPTO will examine the entire application, including any oppositions and counter statements to oppositions, and will publish a decision within 12-18 months. This is unlike many signatories to the Madrid Protocol, given that the BPTO does not make independent decisions specifically regarding oppositions. They take the application as a whole, including oppositions, and carry out a full analysis of the trademark application.
If the final outcome is unfavourable, it is good to know that all BPTO decisions are subject to appeal. Any party to the proceedings may make an appeal to the President of the BPTO within 60 days of publication of the decision in the Gazette. The President will then look over the application once more and within 6-8 months will give a decision on the appeal. This is a final decision and puts an end to the administrative proceedings.
If you need help with a trademark application or any other IP matter in Brazil, we’d love to help you out.
Provisional Refusals Germany
Germany is one of the most popular countries in Europe for trademark applications and has a similar procedure for provisional refusals under the Madrid Protocol as many of its European neighbors. The relevant national law is the Trade Mark Act, and the national TM office is the German Patent and Trade Mark Office (DPMO).
German Trade Mark Journal
Once the application has been received by the DPMO, it will be published in the German Trade Mark Journal, from which date any preregistered TM holder will have 3 months to file an opposition (Form W 7202) and pay the corresponding fees – €250 plus €50 per extra opposing sign.
Once initiated, trademark opposition proceedings in Germany tend to be documentary proceedings consisting of one or two rounds of submissions from both parties, during which the opponent and applicant will make their claims, which if they are to have a strong chance of succeeding, must be well-structured and based on coherent legal arguments – these submissions ought to be redacted and revised by an experienced IP lawyer. Usually, there are no oral hearings at any stage of the opposition proceedings.
At the request of both parties, the DPMO will grant a cooling-off period, similar to the EUIPO in their provisional refusal proceedings, with a duration of 2 months in which the parties may attempt to come to an amicable settlement regarding their trademark dispute. If unsuccessful, the documentary rounds shall continue and the DPMO will give a decision within 12-18 months.
If the final decision of the DPMO ends up being unfavourable, it is still possible to make an appeal to the Federal Patent Court. Such an appeal must be filed in writing with the DPMO within 1 month of the publication of the decision. In this appeals process, a Board of Appeal shall be established that will dictate the proceedings.
The decision from this Board shall be final, unless in said final decision the Board allows for appeal on points of law. If you are able to make an appeal based on points of law, then you may have the chance to appeal to the Federal Court of Justice, however, this is under very limited circumstances – see Section 83 of the Trade Mark Act. Any decision from the Federal Court will be final and no further appeals would be permitted.
Due to the documentary nature of the German provisional refusal proceedings, it would be highly recommended to make good use of an experienced IP lawyer to assist you in the drafting of your submissions to the DPMO. If you have any doubts or would like assistance in any IP-related matter, let us know, and we can get the ball rolling right away.Read More
If you’re reading this article, you will have received a notification of provisional refusal by a pre-registered Chinese or American TM holder who thinks your international trademark application is infringing on their IP rights. Here, we will go over the existing procedures to go against such a notification and fight to protect your IP in China and the United States.
If you need help with your trademark we have a trademark attorney with years of experience who can help you.
Provisional Refusals | Pre-registered Chinese TM
The People’s Republic of China is not necessarily renowned for their protection of IP – in fact, more than 70% of all counterfeited goods in trade are estimated to come from China, which accounts for around 12.5% of their goods exported and 1.5% of their GDP. Nonetheless, the Chinese market is gigantic and is an obvious target for many growing companies. Fortunately, they are signatories to the Madrid Protocol and there are certain mechanisms to protect trademarks in China. The most relevant national law to be aware of is the Chinese Trademark Law, and the relevant national TM office is the Chinese National Intellectual Property Administration (CNIPA), or Chinese Trademark Office.
Notice of opposition
Regarding the procedure, once the international trademark application has been published in the WIPO International TM Gazette, any pre-existing trademark holder may file a notice of opposition within 3 months, starting from one month after the publication date. There will be a further 3-month period to submit relevant documentation.
Once the applicant has received the notification of provisional refusal, they then have 30 days to respond to the opposition. At this point, the applicant must appoint a local representative in order to respond to the opposition. The applicant will also have a 3-month period in order to submit all other documentation relevant to their claim.
It is of utmost importance to understand that the opposition and the response to the opposition shall be the official legal claims of both parties and shall be reviewed by the CNIPA once all documentation has been submitted. These claims should be well-drafted with a coherent structure and a strong legal basis if you are hoping to have the best chances possible to receive a favorable outcome from the Chinese Trademark Office.
We should also take note of the ex officio refusal by the Chinese Trademark Office itself, where they have 12 months to exercise their right of refusal (in some cases 18 months). In this scenario, the trademark applicant will have 15 days to respond to the notice from the date of receipt, where the application shall be returned to the adjudication board of the Chinese Trademark Office for a second review. The CNIPA will then have 9 months to review the application again and will respond to the applicant in writing, declaring their final decision.
If the applicant, either under ex officio provisional refusal or through refusal by opposition, receives a final decision that is unfavorable, they will have 30 days to appeal the decision of the Chinese Trademark Office to the national courts of China. Again, it cannot be understated, to convince a judge that the national trademark office made the wrong decision will require a strong legal argument, something which only experienced IP lawyers can be trusted to construct.
If you would like help relating to an IP matter in China, feel free to get in touch with us.
Provisional Refusals | Pre-registered US TM
Given that the USA is home to some of the largest companies in the world, as well as being the world’s largest economy, it would be no surprise to find a growing company looking to protect their IP in the United States. The key piece of legislation to be aware of is the Trademark Act, and the relevant TM office is the US Patents and Trademarks Office (USPTO).
Notice of Opposition
Once the trademark application is received by the USPTO, and once provisionally approved by the Director, the application will be published in the Official Gazette of the USPTO. From that date, any pre-registered TM holders may file an opposition to the application within 30 days if they believe that the applicant’s new trademark would infringe on their own. This time period may be extended if requested in writing to the Director.
If this notice of opposition is accepted by the USPTO, they will notify the applicant and shall set up a Trademark Trial and Appeal Board in order to come to a final decision on the matter. The Board shall issue an institution order, which is a document that outlines the details of the opposition procedure. This shall be done electronically, and will typically set out a time frame of 40 days for the applicant to respond to the opposition, 6 months for discovery, and then the periods in which the parties can make their testimony – 30 days for the opponent, 30 days for the applicant, and 15 days for the opponent’s rebuttal.
In the applicant’s response to the opposition, they must clearly outline the legal basis for their claim as to why their trademark should be accepted. As stressed previously, it is essential that all arguments submitted to the Board must be based on strong, coherent legal claims – it would be highly recommended hiring an experienced IP lawyer for this.
Once the applicant has answered the opposition, the Discovery period begins, in which both parties may request and receive relevant information and documentation from the counterparty, including written interrogatories, document requests, depositions, and requests for admissions.
At the end of the discovery period, the final stages of the opposition proceedings shall begin. This entails the submission of briefs – mandatory for the opponent, optional (but recommended) for the applicant – which outline each party’s claims. If one of the parties requests an oral hearing, this shall be arranged, however, it should be noted that these hearing are of a summary nature – that is to say, no new evidence may be submitted, only a summary of both parties’ claims. It is common for judges to take advantage of these hearings to clarify aspects of the case that were not entirely clear in the briefs. Once finalized, the Board will make a decision regarding the admissibility of the international trademark application.
If unfavorable, either party may request a rehearing, reconsideration or modification of a decision within 1 month of the date of the decision. If unsuccessful, the losing party can still appeal to either the US Court of Appeals or it can request a brand-new trial in a District Court. A key difference between the two is the ability to introduce new evidence to the case – in the Court of Appeals, no new evidence or arguments may be submitted; in the District Courts, however, it is much more flexible and allows for the introduction of new evidence and arguments.
The US system for registering trademarks can oftentimes seem rather difficult, and just by looking at the law it can still seem unclear as to what path you should take. For any doubts, get in touch with us, and we would be happy to put your mind at ease.Read More
If you’re reading this, it’s safe to imagine that you have applied for an International Trademark, filled out all the forms, and followed the TM registration procedure, but now you are faced with a Notification of Provisional Refusal. One (or more) of the national trademark offices has found a potential problem with your application for IP protection in their country. Or, perhaps you’re looking to file a provisional refusal against a foreign company that would be infringing upon your IP.
Now, depending on the national office, the details of how exactly to oppose such a notification vary depending on the national IP office’s rules and regulations. This is the first of a [X] part, country by country guide on how to oppose to a notification of provisional refusal when registering for an International Trademark.
European Union Notice of Opposition Proceedings
When filing for an international trademark in order to protect your brand across Europe, it may be more convenient and economical to designate the EU as the protected territory instead of individual countries. The manner in which the EUIPO deals with such a designation differs to other countries such as the UK, where the procedure is dealt with nationally.
When the EUIPO receives an application through the WIPO, it will publish the requested trademark’s details in the EUTM Bulletin in Part M, which is dedicated entirely to international Trademark registrations. Once published through the Bulletin, the EUIPO will:
1. Prepare search reports (which, if you wish to access them, you will have to request a copy).
2. Conduct an examination of various formalities that may be relevant to your particular application.
3. Conduct an examination of potential absolute grounds for refusal and of any oppositions that are placed by pre-existing trademark holders within the EU.
We will focus on the procedure for any notice of opposition (or provisional refusal). EU trademark holders will have 3 months from the publication of the application in the EUTM Bulletin to file an opposition – this 3-month period starts exactly 1 months after the application has been published in the Bulletin.
If the EUIPO accepts the notice of opposition, then a notification of provisional refusal is sent to the WIPO, where the applicant will consequently be notified. At this moment, the need for a European representative may arise. This would occur if the applicant is not domiciled within the European Economic Area (EEA).
Once the opposition has been admitted by the EUIPO, the applicant and opponent will have to follow the EU procedure for notices of opposition.
United Kingdom notification of provisional refusal
The UK is a historic world economy that has always hosted a vast array of businesses, so it would come as no surprise if you were to be looking to protect your IP in Britain. In the UK, two key pieces of legislation are the Trade Marks Act 1994 and the Trade Marks Rules 2008. Once the application has been accepted by the IPO, it will be published in the UK IP Journal.
In the UK, the notification of provisional refusal is referred to as a notice of opposition, much like when registering for an EU Trademark.
From the date of publishing, any pre-existing trademark holder may, within a period of 2 months, file a notice of opposition by filling out Form TM7, being sure to pay special attention to the grounds of opposition. This should clearly explain the reasons for which you are opposing the trademark registration – whenever reinforced by sound legal arguments, even better. The IPO registrar would then communicate this notice to the applicant.
The applicant will then have to file a counterstatement through Form TM8 within 2 months of the Notification Date. However, if both parties agree, they may opt-in for a ‘cooling-off period’ of 9 months, which can be extended another 9 months through Form TM9c, also within 2 months of the date of notification. This period would give the parties time to negotiate with each other and come to some sort of amicable agreement. If unsuccessful, the applicant files Form TM8 and the procedure continues. For the opponent, Form TM9t would be the corresponding form to end the cooling-off period.
Differences according to the type of opposition
Depending on the type of opposition made, you will then enter Evidence Rounds or receive Preliminary Indications.
Provisional Refusal: Preliminary Indications
If the notice of opposition results in Preliminary Indications, the Registrar will examine the case and explain to the parties what the most likely outcome will be upon reviewing the evidence. It should be noted that either party can withdraw their application or opposition at any time. If, however, one of the parties is still wanting to pursue their trademark claim, they may file Form TM53 within one month of receiving the Preliminary Indications, which will then initiate the Evidence Rounds.
For the Evidence Rounds, the opponent has 2-3 months (extendable if they convince the Registrar) to file their evidence-in-chief, starting from the date the opponent received Form TM8. This is the main legal basis of your claim against the applicant, where you may also be requested to submit evidence proving that you have been and still are using your Trademark.
Once filed in its entirety, the applicant now has 2-3 months (extendable if they convince the Registrar) to do the same, legally backing their trademark application and its validity. The opponent then has another 2 months to do respond to the applicant’s counterstatement.
The case will then be reviewed by the IPO and, if requested by either of the parties, a Hearing may be called, where the two parties argue their case before the IPO. The IPO will give their decision and that will be the end of the administrative proceedings.
However, if the final decision was unfavourable to you, it is still possible to appeal the decision. The type of appeal and the national entity responsible for hearing the appeal will vary greatly depending on the specific decision.
To give one example, if you are the applicant appealing against an unfavourable decision that has ultimately rejected your trademark application, you can submit Form TM55 within 28 days of the decision in question. This, however, might not be the right procedure for you.
If you would like to speak with a lawyer experienced in these proceedings in order to have the best chance possible of winning your claim, please do get in touch.Read More