Trademark Opposition (Trademark Objection) is a legal proceeding, available in most jurisdictions, in which a party seeks to prevent a pending application for a mark from being granted registration. Although the specific grounds for bringing an opposition vary by jurisdiction, typically, a party that believes it will be damaged by the resulting registration may oppose an application for that mark. Often, the trademark opposition procedure is triggered by official publication of an application in its pre-grant stage in a government journal, gazette or bulletin.
Trademark opposition rules establish an opposition period, usually ranging from one to three months after publication, in which a party’s trademark opposition must be formally entered. In a minority of jurisdictions, the trademark opposition period occurs after the issuance of a registration; this is also known as post-grant opposition. In some jurisdictions, however, no opposition is available, and cancellation after registration is an opponent’s only option.
A formal decision to uphold or dismiss the opposition, thereby refusing or granting the registration, usually is issued in writing. Settlement agreements, involving amendment of the goods or services of the opposed application, withdrawal of the trademark opposition and restrictions on use of the mark, are commonplace; in such cases there is no decision on the trademark opposition. Typically, the losing party in a trademark opposition proceeding can appeal an adverse decision to a higher authority within the trademark office or registry or to a court.
Absolute Grounds and Relative Grounds In An opposition
An opponent (the plaintiff) can raise either absolute or relative grounds in a trademark opposition proceeding. Under absolute grounds, the opponent can claim one or more of the grounds listed below. Alternatively, under relative grounds, the opponent makes a claim of prior rights in the trademark, examples of which are listed below.
The most frequently raised grounds for opposition are as follows:
a) Absolute Grounds
-Descriptiveness; Geographically deceptive misdescriptives
– Genericness; Functionality
-Bad faith; Fraud
b) Relative Grounds
– Priority; Likelihood of confusion
– Bad faith
– Business name/domain name/trade name use
– Well-known/famous mark
Most jurisdictions provide similar grounds for trademark opposition; however, there are some important exceptions.
Defenses to an opposition
Priority of use and no likelihood of confusion are common defenses to a trademark opposition based on likelihood of confusion. Defenses to a trademark opposition based on another ground depend on the evidence submitted by the parties and the law of the applicable tribunal. Equitable defenses, such as laches, estoppel and acquiescence, may be available in some jurisdictions. In the United States, such defenses are available, but they may have limited value because the Trademark Office has jurisdiction only over the registrability of marks, not over their actual use.
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