Tuesday, 4 August 2009

Opposition proceedings in the Community trade mark system - an outline

Oppositions are almost standard procedure in the UK and EC trade mark systems nowadays. The EC has always been an opposition-based system, and the UK shifted towards that position a few years ago. The result is that trade mark owners have to be alert and prepared to take action to protect their trade marks: and to trade mark owners from common law backgrounds, where the authorities keep the register clean by refusing applications that conflict with existing registrations, will find this approach unfamiliar (and the expense unwelcome).
I’ll start by considering what happens in the EC system. The Office examines applications and sends a search report to the applicant and, after the application is published, letters to the owners of earlier Community trade marks identified in the search. However, the applicant does not get to hear about earlier national trade marks that might be an obstacle to his application. National search reports can be requested (at a fee of €144) but only 12 member States will oblige with one, and they do not include the UK, Ireland, Germany, France, Italy or the Benelux.

A two-month cooling-off period follows the service of the notice of opposition (once the Office has determined that the opposition is admissible), during which the parties may try to reach a settlement. If they can agree, perhaps on the basis of a reduced specification of goods or services in the application, the opposition is concluded and there is no award of costs (though it is possible that payment of costs will form part of the settlement). If the settlement is based on a restriction of the specification or withdrawal of the application, the opponent has the opposition fee refunded.

The applicant can demand that the opponent prove that they have used the trade mark in the past five years. Both national and Community trade marks would be liable to revocation if they have not been so used, so they are not a sound basis on which to found an opposition. A Community trade mark (according to the latest case law) has to be used in a substantial part of the Community, so use in only one Member State is probably not enough to support the registration.

If the opponent is able to show use only on some of the goods or services for which the trade mark is registered, the opposition will only be able to proceed in respect of those goods or services.

If the matter is not settled during the cooling-off period, it is determined by the Office on the basis of written submissions, although in rare cases oral proceedings are held. There is a formal process for exchange of observations, and the Opposition Division of the Office will consider these observations in making its determination. If the opposition is upheld, the application is rejected (wholly or in part). If the application is not rejected, it then proceeds to registration.

The CTM Regulation provides that all the costs of opposition proceedings will be borne by the losing party. If the opposition is partly successful, a proportion of the costs will be awarded. Compared with other forms of trade mark disputes, opposition proceedings before the Office are relatively cheap, and the costs of representation that may be awarded in opposition proceedings are €300, which is fairly modest. If the opposition succeeds, the opposition fee (€350) will also form part of the award.

You will find more information on the Office's website, here.

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