As a company, you are inevitably in competition with brands similar to yours. The main aspect of your company that sets you apart from others is your trademark. This is what consumers recognise and link to your brand before anything else, which is why it is highly important that it stands out and is unique. Nowadays, more and more entrepreneurs are springing up in all areas of business which is causing competition to grow fiercer.
This can have a detrimental effect on any established company and their sales if there is a strong similarity between brand logos or company names. A business can avoid this kind of damage if they oppose the other company’s registration of a new trademark.
How Can a Company Oppose a New Trademark?
Usually, a new application for trademark registration is published in government journals or gazettes, in print and online. This gives established companies a door of opportunity to oppose the registration of a trademark before it is granted. In local jurisdictions, there is a set period, usually up to three months, where an individual or group can officially oppose a new registration. The rules of opposition change from state to state. For example, in some states, the opposition period comes after the issuance of registration, called a post-grant opposition. No matter what the outcome, whether it is that the trademark must be amended, that the opposition is granted or that it has been dismissed, all parties are informed in writing.
What Arguments Can a Party State for Opposition?
An opposing view can be split into two categories; absolute grounds and relative grounds. An absolute ground is when a company opposes the trademark due to defects in the mark itself. The most common of these are:
- When the trademark describes the product and/or service
- It is generic of the goods/services
- It is not distinctive to that brand/Fraud
A relative ground covers any argument based on the fact that the trademark would cause conflict with an already established mark, which belongs to the Opposer. The most common of which are:
- Confusion between the brands
- Bad faith
- Name use
- Known mark
It is important to remember that anyone can oppose the rights to a new trademark based on absolute grounds, but only the holder of a prior mark, to which the new mark would cause conflict, can oppose on relative grounds.
What are Common Defenses to an Opposition?
The most common defenses are based on confusion; however, different states may have their own equitable defenses such as estoppel and laches. Do note that all defenses depend on the evidence put forward during the tribunal, by either party.
How to File an Opposition Proceeding
For most states, the opposition must file a proceeding with the trademark office where the registration was first granted. In the United States, this is the Trademark Trial and Appeal Board (TTAB). The TTAB is the tribunal that deals with all issues related to Trademark registration Appeals dealt with by examining attorneys. In Europe, a company residing outside of the EU is permitted to file an opposition, however, a member of the EU must be appointed as a representative.
What Remedies are Available in an Opposition Proceeding?
Remedies are not in abundance. For most states, the only remedy is the refusal, or partial refusal to register a mark. The United States Patent and Trademark Office (USPTO) are not permitted to cover the cost of attorney’s fees. However, in the EU for example, the winning party may be assisted in the matter.
What are the Legal and Practical Effects of an Opposition?
The most practical effect of an opposition is to prevent a new trademark, which is similar to the Opposer’s mark, from being granted. It can also be used to create leverage for the Opposer when they wish to create a coexistence agreement to define the use of both marks with the trademark applicant. In this situation, the applicant is usually willing to accept the offer and enter into the agreement, rather than being faced with a possible costly court battle. If an Opposer is successful, then by law, the applicant’s registration is denied. However, in the United States the TTAB do not hold the power to prevent a trademark from being used if it is unregistered. Most countries may be able to influence a civil court to continue with further proceedings on the grounds of confusion, descriptiveness or being too generic, as local trademark offices are known to have the expertise on these issues. In countries such as Brazil, Argentina and Chile, courts are not ruled by the outcomes of infringement proceedings, therefore, the results are not deemed important when taking the case into their own hands.
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