Syllabus 9 Oppositions and observations Flashcards
Oppositions and observations, (35 cards)
What are the grounds for a UK trade mark opposition?
Section 3 (absolute grounds) and/or Section 5 (relative grounds).
Who can file a UK opposition based on Section 5 (relative grounds)?
Only the owner of the mark or right(s) on which the opposition is based.
What is the initial time limit for filing a UK opposition after the application is published?
Two months, with a potential one-month extension.
When is proof of use required in a UK opposition based on an earlier registered mark?
If the earlier mark has been registered for more than 5 years at the time the opposed application is published.
What happens if the applicant in a UK opposition fails to file a Notice of Defence (TM8) within the specified time?
The application is deemed abandoned (if opposed in full).
What is the maximum possible duration of the “cooling off” period in UK opposition proceedings?
Up to 18 months (initial 9 months plus a 9-month extension).
What is the purpose of a Preliminary Indication in UK opposition?
To provide an indication of the likely decision in proceedings based on s.5(1) or (2) grounds, aiming for early conclusion.
Who can file third-party observations against a UK trade mark application?
Any person.
What grounds can third-party observations against a UK application be based on?
Absolute grounds only.
Is a person who files third-party observations a party to the UK application proceedings?
No.
What is the UKIPO’s aim for completing opposition actions?
Within twelve months of the Applicant filing its defence.
What are some grounds for an EU trade mark opposition listed in Article 8(1) of the EUTMR?
The contested mark is identical to the earlier mark for identical goods/services, or there is a likelihood of confusion, or use would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark.
What is an EU opposition ground based on Article 8(3) EUTMR?
The applicant was an agent or representative of the opponent and applied for the mark without consent.
What is an EU opposition ground based on Article 8(4) EUTMR?
An earlier non-registered trade mark or other sign used in the course of trade of more than mere local significance, conferring a right to prohibit use.
What is an EU opposition ground based on Article 8(6) EUTMR?
An earlier designation of origin or geographical indication conferring a right to prohibit use.
Who must file an EU opposition based on relative grounds?
The owner of an earlier trade mark or earlier right.
Can licensees file an EU opposition?
Yes, if they have been authorised by the owner.
What is the time limit for filing a Notice of Opposition against an EUTM application after its publication?
Three months.
Is an extension of time possible for filing the Notice of Opposition at the EUIPO?
No extension of time is possible.
In which languages must an EU Notice of Opposition be filed?
One of the five languages of the EUIPO (Spanish, German, English, French and Italian) which must also be one of the two languages chosen by the applicant for the EUTM.
What happens if an EU Notice of Opposition is filed in an EUIPO language that does not match the applicant’s languages?
The Opponent is given one month to provide a translation into the appropriate language.
What information must be clearly identified in an EU Notice of Opposition?
The trade mark application, the Opponent, the earlier right(s) relied on, and the grounds invoked.
What is the EUIPO’s term for the evidence provided by parties in opposition proceedings?
“Observations”. (Note: This differs from the UKIPO’s term “evidence”).
When can an applicant request proof of use of an earlier mark in EU opposition proceedings?
During the first term for filing evidence, for trade marks registered for more than five years by the date of filing or priority of the opposed EUTM (whichever is earlier).
